DETAILED ACTION
Claims 15-16 and 20 are amended.
Claim 19 is cancelled.
Claims 1-18, 20, 22 and 24-25, 27 and 29 are pending, with claims 1-14, 27 and 29 being withdrawn.
Claims 15-18, 20, 22 and 24-25 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 .
Examiner’s Notes
Upon further consideration of the amended claim 15, which recites the previous claim 19, which was not rejected over Cuif. However, upon further consideration of Cuif, Cuif does meet the amended claim 15. Therefore, a new set of rejection under Cuif is provided as set forth below, and hence, this is a second non-final.
Information Disclosure Statement
As noted in the previous Office Action mailed 04/23/2025, the second non-patent literature document provided in the information disclosure statement filed on 11/28/2022 fails to comply with 37 CFR 1.97(c) because it lacks a timing statement as specified in 37 CFR 1.97(e). It has been placed in the application file, but the information referred to therein has not been considered.
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.
Claims 15, 16, 18, 20 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Cuif et al. (WO 98/45212 A1) (Cuif), as provided in the IDS filed 11/28/2022.
Regarding claim 15, Cuif discloses a method for producing cerium and zirconium mixed oxides and cerium and zirconium solid solutions (i.e., a process of producing a composition comprising zirconium, cerium) (Cuif, Title; page 2, last paragraph).
Cuif further discloses the preparation of a mixture in an aqueous medium of a soluble cerium compound, and a soluble zirconium compound (i.e., mixing aqueous zirconium solution, cerium solution to provide a mixture) (Cuif, page 7 – “Aqueous Coprecipitation”, second paragraph).
Cuif further discloses oxalic acid, i.e., HO2C-CO2H being used as an additive (Cuif, page 15 first paragraph and second paragraph, “Suitable carboxylic acids” – “Oxalic”) to the solution or the precipitate during the formation of the cerium and zirconium oxides (mixed or solid solution) to improve the thermal stability, surface area, oxygen storage capacity, and/or porosity of oxides and their precursors (Cuif, page 9, “Additives” to page 10, third paragraph).
Cuif further discloses the additive being provided in the form of an aqueous solution (Cuif, page 10, last paragraph to page 11, first paragraph), and thus it is clear that the oxalic acid added to the mixture would be necessarily in the form of an aqueous solution (i.e., mixing aqueous oxalic acid, zirconium solution, cerium solution).
Cuif further discloses the determination of an effective amount of addition for the additives being within the skill of an artisan and is generally from 1% to about 35% based on the weight percent of the reaction media and reagents, and an excess of additive can be utilized without detrimentally effecting the benefits of addition (Cuif, page 16, fourth full paragraphs). Given that the reaction media and reagents comprise the mixture of cerium solution and zirconium solution (i.e., equivalent oxide content) and the additives, the amount of the addition of the additives, e.g., oxalic acid, with respect to the equivalent oxide content, would be at least 1% (i.e., 1/(100-1)) to 54% (i.e., 35/(100-65)), which overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Alternatively, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, given that the amount of addition for the additives is recognized in Cuif as a variable affecting the effectiveness of the additive and the performance of the process and may therefore be treated as a result-effective variable for routine optimization within the claimed range, and therefore, it would have been obvious to one of ordinary skill in the art to vary the amounts of addition for the additives, e.g., oxalic acid, including over the amounts presently claimed, in order to optimize the effectiveness of the additives and performance of the process, and thereby arrive at the claimed invention.
Cuif further discloses carrying out precipitation and washing to obtain a precipitate (Cuif, page 8, second full paragraph to page 9, first full paragraph), where additives, e.g., lauric acid and a surfactant, e.g., diethylene glycol n-butyl ether are used (Cuif, page 13, “DOWANOL DB”, page 22, first full paragraph).
Given that Cuif discloses the additives that overlap the presently claimed components, including lauric acid and diethylene glycol n-butyl ether, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use lauric acid and diethylene glycol n-butyl ether, which are both disclosed by Cuif and encompassed within the scope of the present claims, in a base solution (Cuif, page 8, second full paragraph) (i.e., a basic solution) to be added to the mixture for forming the zirconium cerium mixed oxides and zirconium cerium solid solution (i.e., adding the mixture to a basic solution comprising lauric acid and diethylene glycol mono-n-butyl ether to form a precipitate).
Cuif further discloses a next stage of the process being calcination of the precipitate, which allows the formation of a crystalline solid solution phase (i.e., calcining the precipitate to provide a composition comprising zirconium, cerium) (Cuif, page 9, second full paragraph).
Cuif further discloses the Ce and/or Zr solutions can comprise rare earth elements, e.g., Pr or La (Cuif, page 8, first paragraph) (i.e., optionally one or more rare earth solutions other than cerium and yttrium solution), and thus it is clear that the composition would be necessarily comprising rare earth elements, e.g., Pr or La (i.e., a composition comprising optionally one or more other rare earths other than cerium and yttrium).
Regarding claim 16, as applied to claim 15, Cuif teaches the Ce and/or Zr solutions can comprise rare earth elements, e.g., Pr or La (Cuif, page 8, first paragraph), as discussed above, it is clear that the composition would be necessarily comprising rare earth elements, e.g., Pr or La (i.e., one or more rare earth solutions selected from the group consisting of lanthanum, praseodymium, neodymium, and mixtures thereof are mixed to provide the mixture).
Regarding claim 18, as applied to claim 15, Cuif further teaches carrying out precipitation to obtain a precipitate (Cuif, page 8, second full paragraph to page 9, first full paragraph), where the obtained precipitate can be washed (i.e., further comprising washing the precipitate with water after precipitation) (Cuif, page 9, second paragraph).
Regarding claim 20, as applied to claim 15, Cuif further discloses the normality of the base solution (i.e., basic solution) varying within wide limits, e.g., between 1 and about 5 N (page 8, second full paragraph), which overlaps the claimed amount.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Cuif further discloses lauric acid being used as an additive (Cuif, page 15 – “Suitable carboxylic acids” – “Lauric”), with an amount equal to (i.e., 100%) the weight of total oxide, which falls within the claimed range (i.e., the lauric acid is in an amount of approximately 50-200% by weight with respect to oxides) (Cuif, page 22, first and second paragraphs).
Cuif further teaches a surfactant, e.g., diethylene glycol n-butyl ether being used as an additive (page 13, “DOWANOL DB”), where the determination of an effective amount of addition for the additives is within the skill of an artisan and is generally from 1% to about 35% based on the weight percent of the reaction media and reagents, and an excess of additive can be utilized without detrimentally effecting the benefits of addition (Cuif, page 16, third and fourth full paragraphs). Given that the reaction media and reagents comprise the mixture of cerium solution and zirconium solution (i.e., equivalent oxide content) and the additives, the amount of additives, e.g., diethylene glycol n-butyl ether, with respect to the equivalent oxide content, would be at least from 1% (i.e., 1/(100-1)) to 54% (i.e., 35/(100-65)), which overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Alternatively, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, given that the amount of addition for the additives is recognized in Cuif as a variable affecting the effectiveness of the additive and the performance of the process and may therefore be treated as a result-effective variable for routine optimization within the claimed range, and therefore, it would have been obvious to one of ordinary skill in the art to vary the amounts of addition for the additives, e.g., diethylene glycol n-butyl ether, including over the amounts presently claimed, in order to optimize the effectiveness of the additives and performance of the process, and thereby arrive at the claimed invention.
Regarding claim 25, as applied to claim 15, given that Cuif does not teach any active comminution step, it is clear that an active comminution step is not required in the process of Cuif, i.e., the process does not include an active comminution step.
Claims 15-18, 22 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Murota et al. (EP 0628515 A1) (Murota), as provided in the IDS filed 11/28/2022, in view of Zhou, “Facile synthesis of high surface area nanostructured ceria-zirconia-yttria-lanthana solid solutions with the assistance of lauric acid and dodecylamine” and Chane-Ching (US 2003/0187077A1) (Chane-Ching), taken in view of evidence by Sage, “Glycol Ethers” (Sage).
Regarding claim 15, Murota teaches a method for producing a cerium and zirconium-containing compound oxide that contains cerium and zirconium (Murota, Title, Abstract) (i.e., a process of producing a composition comprising zirconium, cerium), which can be utilized as exhaust gas purification catalysts (Murota, col. 1, first paragraph).
Murota further teaches the method involves the steps of (a) mixing a solution containing cerium ions and zirconium ions with an aqueous solution selected from e.g., an aqueous solution of oxalic acid to produce a cerium and zirconium-containing composite salt precipitate (i.e., mixing aqueous oxalic acid, zirconium solution, cerium solution, to provide a mixture), and (b) baking the precipitate (i.e., calcining the precipitate to provide a composition comprising zirconium, cerium) (Murota, Abstract; col.2, last paragraph to col. 3, first paragraph).
Murota further teaches a solution containing other rare earth metals can be mixed into the mixture (Murota, col. 2, “Description of Preferred Embodiments” – third paragraph and fifth paragraph), where examples of other rare earth metals contained in the compound oxide can include neodymium, praseodymium, lanthanum, samarium, europium, gadolinium, terbium, dysporosium, holmium, erbium and yttrium (i.e., a composition comprising optionally yttrium, optionally one or more other rare earths other than cerium and yttrium; mixing optionally yttrium, optionally one or more rare earth solutions other than cerium and yttrium solution) (Murota, col. 2, “Description of Preferred Embodiments” – third paragraph).
Murota further teaches the aqueous solution being selected from more than one type, i.e., an aqueous solution of ammonia, an aqueous solution of ammonium bicarbonate and an aqueous solution of oxalic acid (Murota, col.2, last paragraph to col. 3, first paragraph).
Murota further teaches a mixing ratio of the solution containing cerium ions and zirconium ions to an aqueous solution of oxalic acid is 1:1 (i.e., 100%) to 1:2 (i.e., 50%) by weight ratio (Murota, col.2, last paragraph to col. 3, first paragraph), which falls within the claimed range (i.e., wherein the oxalic acid is added in an amount of approximately 25-100% by weight with respect to equivalent oxide content).
Murota does not explicitly teach adding the mixture to a basic solution comprising (1) lauric acid and (2) diethylene glycol mono-n-butyl ether to form a precipitate, as presently claimed.
With respect to the difference (1), Zhou teaches synthesis of ceria-zirconia-yttria-lanthana solid solutions with the assistance of lauric acid (Zhou, Title and Abstract), which has used in exhaust gas purification catalyst (e.g., automotive three-way catalyst) (page 281, 1. Introduction – first paragraph).
As Zhou expressly teaches, lauric acid could significantly enhance the textural properties and thermal stability of the material (Zhou, page 283, 3.2. N2 adsorption-desorption characterizations – first and second paragraphs; 3.3. Scanning electron microscopy (SEM) and transmission electron microscopy (TEM) studies – first paragraph; page 284, right column – first paragraph; page 287, left column; page 289, 4. Conclusions).
As Zhou further expressly teaches, the addition of lauric acid could also significantly reduce the surface tension during drying, and effectively support the network structures of the material and resist the collapse of pores upon drying and calcination (Zhou, Abstract).
Zhou and Murota are analogous art as they are both drawn to preparation of cerium and zirconium containing materials for exhaust gas purification.
In light of the motivation of using lauric acid disclosed by Zhou as described above, it would therefore have been obvious to one of ordinary skill in the art to use lauric acid in a base solution to be added to the mixture of Murota (i.e., adding the mixture to a basic solution comprising lauric acid), in order to enhance the textural properties and thermal stability of the material, and effectively support the network structures of the material and resist the collapse of pores upon drying and calcination, and thereby arrives at the claimed invention.
With respect to the difference (2), Chane-Ching teaches a dispersion of cerium compound that can further contain zirconium and rare earths other than cerium (Chane-Ching, Title, and Abstract), which can be used as catalysts in many applications, e.g., automobile exhausts (i.e., exhaust gas purification) (Chane-Ching, [0064]).
Chane-Ching further teaches an organic solvent can be added to the aqueous dispersion (Chane-Ching, [0056]), where examples of solvents include glycol ethers (e.g., diethylene glycol mono-n-butyl ether) (Chane-Ching, [0022]).
As Chane-Ching expressly teaches, the dispersions in a continuous phase can be constituted by a water/water-miscible organic solvent mixture or dispersions in an organic water-miscible solvent (Chane-Ching, [0021]).
Chane-Ching and Murota are analogous art as they are both drawn to preparation of cerium and zirconium containing materials for exhaust gas purification.
In light of the motivation of using organic solvents disclosed by Chane-Ching as described above and further given that diethylene glycol butyl ether (i.e., diethylene glycol mono-n-butyl ether) is one of the most commonly and widely used E-series (ethyl) glycol ethers, as evidenced by Sage (Sage, page 1, last paragraph), it would therefore have been obvious to one of ordinary skill in the art to use the diethylene glycol mono-n-butyl ether as an organic solvent in Murota, (i.e., adding the mixture to a basic solution comprising lauric acid and diethylene glycol mono-n-butyl ether), in order to provide dispersions in a continuous phase, and thereby arrives the claimed invention.
Regarding claim 16, as applied to claim 15, Murota teaches a solution containing other rare earth metals can be mixed into the mixture (col.2, last paragraph to col. 3, first paragraph), where examples of other rare earth metals contained in the compound oxide can include neodymium, praseodymium, lanthanum, samarium, europium, gadolinium, terbium, dysporosium, holmium, erbium and yttrium (col. 2, “Description of Preferred Embodiments” – third paragraph).
Given that Murota discloses the rare earth metals that overlaps the presently claimed rare earth elements, including lanthanum, praseodymium, and neodymium, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the lanthanum, praseodymium, neodymium, which is both disclosed by Murota and encompassed within the scope of the present claims.
Regarding claim 17, as applied to claim 15, Murota teaches a solution containing other rare earth metals can be mixed into the mixture (col.2, last paragraph to col. 3, first paragraph), where examples of other rare earth metals contained in the compound oxide can include neodymium, praseodymium, lanthanum, samarium, europium, gadolinium, terbium, dysporosium, holmium, erbium and yttrium (col. 2, “Description of Preferred Embodiments” – third paragraph).
Given that Murota discloses the rare earth metal that overlaps the presently claimed element, i.e., yttrium, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the yttrium, which is both disclosed by Murota and encompassed within the scope of the present claims.
Regarding claim 18, as applied to claim 15, Zhou teaches the process includes washing the precipitate with water after the precipitation process (Zhou, page 282, 2.1 Materials preparation – first paragraph to fourth paragraph) (i.e., further comprising washing the precipitate with water after precipitation).
Regarding claim 22, as applied to claim 15, Murota further teaches baking the precipitate at a temperature of at least 300 °C or higher with a time duration from 1 to 10 hours (Abstract; col. 3, first full paragraph),
wherein the temperature overlaps the claimed range, and
wherein the time duration overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Regarding claim 24, as applied to claim 15, Zhou teaches synthesizing CeO2-ZrO2 based materials with superior textural properties and thermal stability by supercritical ethanol drying technology (i.e., the process further comprises supercritical drying) (page 281, 1. Introduction – second paragraph).
Regarding claim 25, as applied to claim 15, given that Murota does not teach any active comminution step, it therefore would be obvious to one of ordinary skill in the art that Murota teaches the process does not include an active comminution step, as presently claimed.
Response to Arguments
In response to the amended claim 20, the previous specification objection is withdrawn.
The amended claim 15 includes the limitations of the previous claim 19 which was not rejected over Cuif. However, upon further consideration of Cuif, Cuif does meet the amended claim 15. Therefore, a new set of rejection under Cuif is provided as set forth above.
Applicants primarily argue:
“a skilled person in the art would have no reason to arbitrarily choose oxalic acid and diethylene glycol n-butyl ether to use in combination with lauric acid when Cuif lists many possible additives and general structures of additives. Cuif teaches dozens, if not hundreds, of possible different additives that could be used. Applicant respectfully asserts that a skilled person would have had no reason to select the particularly claimed combination of components and combine them with the methods taught in Cuif.”
Remarks, page 7
The Examiner respectfully traverses as follows:
Applicant argues a skilled person in the art would have no reason to particularly choose the claimed combination of components, i.e., oxalic acid and diethylene glycol n-butyl ether to use in combination with lauric acid when Cuif lists many possible additives and general structures of additives.
However, given that Cuif discloses the additives that overlap the presently claimed components, including oxalic acid, lauric acid and diethylene glycol n-butyl ether, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the oxalic acid, lauric acid and diethylene glycol n-butyl ether, which are both disclosed by Cuif and encompassed within the scope of the present claims.
Applicants further argue:
“Cuif in no manner anticipates or renders obvious the present claimed process as there is no recognition in Cuif of the benefit of preparing a composition by the claimed process. There is no motivation to practice the present claimed process.”
Remarks, page 8
The Examiner respectfully traverses as follows:
Applicant argues Cuif does not anticipate or renders obvious the present claimed process as (1) Cuif does not recognize the benefit of preparing a composition by the claimed process and (2) there is no motivation to practice the present claimed process.
However, as set forth in MPEP 2121, a prior art reference provides an enabling disclosure and thus anticipates a claimed invention if the reference describes the claimed invention in sufficient detail to enable a person of ordinary skill in the art to carry out the claimed invention; “proof of efficacy is not required for a prior art reference to be enabling for purposes of anticipation.” Impax Labs. Inc. v. Aventis Pharm.Inc., 468 F.3d 1366, 1383, 81 USPQ2d 1001, 1013 (Fed. Cir. 2006) (citing Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326, 75 USPQ2d 1297, 1302 (Fed. Cir. 2005)).
Therefore, it is the examiner' s position that Cuif renders the present claims obvious, absent evidence to the contrary.
Applicants further argue:
“Murota does not disclose the use of lauric acid or diethylene glycol n-butyl ether. Murota does not disclose combining these additives.”
Remarks, page 8
The Examiner respectfully traverses as follows:
While applicant points to specific examples of Murota to support the position, it is noted “Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicants further argue:
“The presently claimed methods differ from Murota in that the process requires a combination of the additives oxalic acid, lauric acid and diethylene glycol n-butyl ether. As already discussed above with regard to Cuif, the examples of the application demonstrate how this particular combination of additives provide a desirable composition having a smaller particle size compared to a process that does not comprise this specific combination. The present claimed process provides such a composition.”
Remarks, page 8
The Examiner respectfully traverses as follows:
Firstly, it is noted that the examples of the application (e.g., Examples 1-3) only show using specific amounts and/or specific types of the claimed composition (e.g., CeO2/ZrO2/La2O3/Nd2O3, Examples 1-3), while the present claims broadly encompass using a wide range of amounts (e.g., any amounts) and/or types (e.g., any type of rare earths other than cerium) of claimed composition.
Secondly, the examples of the application (e.g., Examples 1-3) appears to not provide a side-by-side comparison when comparing the working example with the comparative example (i.e., a process that does not comprise this specific combination).
Therefore, applicant’s argument to establish unexpected results is not persuasive.
Applicants further argue:
“There is nothing taught in Murota that the combination of these additives, including oxalic acid, would have such an effect. Therefore, a person of ordinary skill in the art clearly would have no reasonable expectation of obtaining the claimed composition through implementation of the claimed method.”
Remarks, page 8
The Examiner respectfully traverses as follows:
Firstly, 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 Murota does not expressly teach the claimed lauric acid or diethylene glycol n-butyl ether or their combination. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Murota does not disclose the entire claimed invention. Rather, Zhou and Chane-Ching are relied upon to teach claimed elements missing from Murota. See pages 11-13 above.
Further, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. 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. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants further argue:
“The addition of Zhou, Chane-Ching and Sage cannot cure the deficiencies of Murota.
The secondary references do not provide any motivation to combine oxalic acid, lauric acid and diethylene glycol mono-n-butyl ether in the manner of the present process, as there is no recognition whatsoever in the references that combining those particular additives in the manner of the claimed process provides the benefit that has been demonstrated in the examples of the present application. One of ordinary sill in the art would have no motivation to piece together the art to achieve the present process.”
Remarks, page 8
The Examiner respectfully traverses as follows:
Applicant argues that Zhou, Chane-Ching and Sage do not cure the deficiencies of Murota as these references do not provide motivation to be combined together to achieve the present process.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Zhou and Murota are both drawn to preparation of cerium and zirconium containing materials for exhaust gas purification. Zhou provides proper motivation to combine, namely lauric acid could significantly enhance the textural properties and thermal stability of the material and the addition of lauric acid could also significantly reduce the surface tension during drying, and effectively support the network structures of the material and resist the collapse of pores upon drying and calcination. Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to use lauric acid in a base solution to be added to the mixture of Murota (i.e., adding the mixture to a basic solution comprising lauric acid), in order to enhance the textural properties and thermal stability of the material, and effectively support the network structures of the material and resist the collapse of pores upon drying and calcination, absent evidence to contrary.
Chane-Ching and Murota are both drawn to preparation of cerium and zirconium containing materials for exhaust gas purification. Chane-Ching provides proper motivation to combine, namely the dispersions in a continuous phase can be constituted by a water/water-miscible organic solvent mixture or dispersions in an organic water-miscible solvent. Sage is used as teaching reference, namely diethylene glycol butyl ether (i.e., diethylene glycol mono-n-butyl ether) is one of the most commonly and widely used E-series (ethyl) glycol ethers Therefore, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to use the diethylene glycol mono-n-butyl ether as an organic solvent in Murota, in order to provide dispersions in a continuous phase, absent evidence to contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIALAN ZHANG whose telephone number is (703)756-1794. The examiner can normally be reached M-F 9-5.
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/J.Z./
Examiner, Art Unit 1732
/KELING ZHANG/Primary Examiner, Art Unit 1732