DETAILED ACTION
Claims 1-10 were rejected in the Office Action mailed 08/20/2025.
Applicant filed a response on 12/22/2025.
Claims 1-20 are pending, of which claims 11-20 are withdrawn.
Claims 1-10 are rejected.
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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kunze et al. (US 2010/0209308) (Kunze) in view of Watanabe (US 2004/0156760).
Regarding claims 1 and 10
Kunze teaches a nonwoven mat for a mounting mat in a catalytic converter comprising polycrystalline aluminosilicate fibers possessing an average diameter between 1 and 15 microns and an average length up to 1000 mm. The polycrystalline aluminosilicate fibers are entangled to form the cohesive nonwoven mat. See, e.g., abstract and paragraphs [0029-0030], [0032], [0034-0035], [0046-0047], [0069], and [0075].
It should be noted that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Given there is no limitation on the length of the polycrystalline aluminosilicate fibers, including lengths up to 1000 mm, which falls into the length of the claimed aluminosilicate filament as discussed in paragraph [0047] of the specification, it follows the aluminosilicate fiber corresponds to the claimed aluminosilicate filament.
With respect to the difference, Watanabe teaches a catalyst carrier holding material for catalytic converters having heat resistance and high compression resistance in high temperature ranges. The catalyst carrier comprises inorganic aluminosilicate fibers having a mullite ratio of 35 to 70%. When the proportion of mullite is in this range, the holding material is provided minimized bearing reduction (compression resistance) and maintains wind erosion resistance. See, e.g., abstract and paragraphs [0008], [0019], [0030-0031], and [0072] and Table 1.
Watanabe and Kunze are analogous art as they are both drawn to nonwoven material for use in catalytic converters.
In light of the motivation as provided by Watanabe, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the aluminosilicate fibers of Kunze, such that they possess a mullite ratio of 35 to 70%, in order to provide high initial bearing in addition to maintaining compression resistance and wind erosion resistance, and thereby arrive at the claimed invention.
Regarding claim 2
Kunze in view of Watanabe teaches all of the limitations of claim 1 above, including the aluminosilicate fibers having a mullite ratio of 35 to 70% as discussed above. It should be noted that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 3
Kunze further teaches the nonwoven mat further includes fibers selected from the group consisting of alumina, silica, glass, carbon, silicon carbide, and zirconia. Paragraph [0029].
Regarding claims 4-6
Kunze further teaches the aluminosilicate fibers comprise about 60 to about 98 percent by weight alumina and about 40 to about 2 percent by weight silica. Paragraph [0032].
It should be noted that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claims 7-8
Kunze further teaches the nonwoven mat further comprises a binder to bond together the aluminosilicate fibers. Suitable binders include polyvinyl alcohol, polyolefins, polyester, and polyvinyl acetate. Paragraphs [0077-0081].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kunze et al. (US 2010/0209308) (Kunze) in view of Watanabe (US 2004/0156760), as applied in claim 7 above, and further in view of Merry (US 2009/0208384).
Regarding claim 9
Kunze in view of Watanabe teaches all of the limitations of claim 7 above, however does not teach the use of an inorganic binder.
With respect to the difference, Merry teaches an inorganic fiber mounting and insulating sheet for use in pollution control devices, such as catalytic converter. The inorganic fiber mounting and insulating sheet is a nonwoven material, wherein the polycrystalline ceramic fibers are held together by an inorganic binder. Suitable inorganic binders include bentonite clay and colloidal silicas. See, e.g., abstract and paragraphs [0016] and [0019].
Merry and Kunze in view of Watanabe are analogous art as they are both drawn to mounting and insulating material for use in pollution control devices.
In light of the disclosure of Merry, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use an inorganic binder such as bentonite clay or colloidal silica to bond the polycrystalline ceramic fibers of Kunze in view of Watanabe, in order to form a mounting mat with predictable success, as Merry teaches bentonite clay or colloidal silicas are suitable inorganic binders for forming a nonwoven mounting mat for a pollution control device, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics, and thereby arrive at the claimed invention. In re Leshin, 227 F.2d 198 (CCPA 1960).
Response to Arguments
The previous rejection of claims 1-10 are substantially maintained.
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive, as set forth below.
Applicant primarily argues Kunze fails to teach the claimed aluminosilicate ceramic filaments having an average diameter of less than 2 microns as recited in claim 1. The average diameter to which the Office Action cites is provided in paragraph [0034] of Kunze, which is reproduced below: “The aluminoborosilicate fibers preferably are at least 50 percent by weight crystalline, more preferably, at least 75 percent, and most preferably, about 100% (i.e., crystalline fibers). Aluminoborosilicate fibers are commercially available, for example, under the trade designations “NEXTEL 312” and “NEXTEL 440” from the 3M Company. The ceramic fibers obtainable through a sol-gel process are typically shot free or contain a very low amount of shot, typically less than 1% by weight based on total weight of the ceramic fibers. Also, the ceramic fibers will typically have an average diameter between 1 micrometer and 16 micrometers. (emphasis added).” Applicant argues paragraph [0034] is focused on aluminoborosilicate fibers and therefore the recited average diameter are for aluminoborosilicate fibers. It would be unreasonable in this context to apply the specified fiber diameters more broadly. Remarks, pages 7-8.
The Examiner respectfully disagrees, as follows:
The fact remains Kunze teaches the ceramic fibers will typically have an average diameter between 1 micrometer and 16 micrometers in paragraph [0034] (emphasis added). Therefore, the teaching regarding the average diameter is applied to the ceramic fibers discussed in Kunze, not just aluminoborosilicate fibers. It is the Examiner’s opinion if the recited average diameter was limited to aluminoborosilicate fibers, then the specification would state “the aluminoborosilicate fibers” in place of “the ceramic fibers” in paragraph [0034]. This is further confirmed in paragraph [0046] of Kunze which states the inorganic fibers for use with the present method typically have an average diameter of from about 1 micrometers to 50 micrometers and paragraph [0035] which states aluminosilicate fibers having an average fiber diameter in the range described in paragraph [0034].
Applicant further argues Kunze fails to teach the aluminosilicate ceramic filaments comprise an average of about 15 wt.% to about 80 wt.% crystalline mullite. Remarks, page 7.
The Examiner respectfully disagrees, as follows:
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Kunze does not expressly teach the claimed amount of mullite. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Kunze does not disclose the entire claimed invention. Rather, Watanabe is relied upon to teach claimed elements missing from Kunze. See pages 4-5 of the Office Action mailed 08/20/2025 and the Office Action above.
Applicant further argues Watanabe fails to remedy Kunze. Watanabe teaches that if the organic fibers have a mean diameter smaller than 2 microns, they tend to be brittle with insufficient strength. Watanabe at paragraph [0044]. Therefore, Watanabe teaches away from aluminosilicate ceramic filaments having a diameter of less than 2 microns. Remarks, pages 8-9.
The Examiner respectfully disagrees, as follows:
It is noted Watanabe is not relied upon to meet the limitation regarding the average diameter of the aluminosilicate fibers. Instead, Watanabe is a teaching reference used to modify the aluminosilicate fibers of Kunz to include a mullite ratio of 35 to 70% as discussed on pages 4-5 of the Office Action mailed 08/20/2025 and repeated above. It is noted that while Watanabe does not disclose all the features of the present claimed invention, Watanabe is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, i.e., mullite ratio, and in combination with the primary reference, discloses the presently claimed invention. It appears he amount of mullite in the aluminosilicate fiber to attain a minimized bearing reduction and maintain wind erosion resistance does not hinge on the diameter of the aluminosilicate fiber, therefore the diameter of aluminosilicate fibers of Watanabe is not germane.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789