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 .
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and 20 of copending Application No. 17/584,803 (reference application) in view of Lee (US 2011/0086174 A1). BASF (Tinuvin 5100 TDS) is cited as an evidentiary reference.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, Claim 1 of the reference application teaches a paint formulation comprising a nanoporous cerium oxide macro-structure whose particulate diameter, macro-structure diameter, and macro-structure pore diameters are identical to the claimed ranges.
Claim 1 of the reference application differs from the instant claim 1 because it is silent with regard to the incorporation of a co-antioxidant.
In the same field of endeavor, Lee teaches a paint formulation stabilized using Tinuvin 5100 ([0069], Table 1). Tinuvin 5100 is a hindered-amine light stabilizer which is also a tertiary alkylamine compound (c.f. BASF p. 1), which reads on the claimed “co-antioxidant” because the instant claims and specification explicitly state that tertiary alkylamine compounds fall within the purview of the claimed “co-antioxidant” materials (c.f. claim 2 and instant Specification at p. 7, first full paragraph). Lee further teaches that the incorporation of stabilizers is useful to improve the UV resistance of the paint ([0053]). It therefore would have been obvious to one of ordinary skill in the art to incorporate Tinuvin 5100 into the formulation of the reference application as taught by Lee to improve the UV resistance of the paint formulation.
Regarding claim 2, as described above, claim 1 of the reference application as modified by Lee teaches the incorporation of Tinuvin 5100, which reads on tertiary alkylamine compounds from the claimed list.
Regarding claim 3, as described in the rejection of claim 1, claim 1 of the reference application as modified teaches a composition containing the claimed “cerium oxide nanoparticles” and “co-antioxidant.” Claim 4 of the reference application also teaches the incorporation of a polystyrene-polyacrylate copolymer, which reads on the claimed “organic compound susceptible to autoxidation” because the instant claim set and the instant Specification both specify that polymers comprising polystyrene fall within this category (c.f. claim 8 and p. 7, continuing paragraph of instant Specification).
Regarding claim 4, claim 2 of the reference application teaches the inclusion of the cerium oxide nanoparticulate macro-structure in amounts ranging from 0.01 to 10 wt%, which encompasses the claimed range, establishing a prima facie case of obviousness.
Regarding claim 5, Lee teaches the incorporation of 0.2 g of Tinuvin 5100 in a formulation containing 150 total grams of material ([0069]), which totals to 0.13 wt/% of the paint formulation. It therefore would have been obvious to one of ordinary skill in the art at the time of filing to incorporate 0.13 wt% of Tinuvin 5100 into the formulation of the reference application, which falls within the claimed range of “0.1 % (wt.) to 0.5 % (wt.),” establishing a prima facie case of obviousness.
Regarding claims 6-8, Claim 4 of the reference application also teaches the incorporation of a polystyrene-polyacrylate copolymer, which reads on the claimed materials.
Regarding claim 9, Claim 20 of the reference application teaches the mixing of the inventive composition. Additionally, Lee teaches the mixing of the paint components ([0062]). It therefore would have been obvious to one of ordinary skill in the art at the time of filing to mix these components together. Doing so would read on the claimed method.
Regarding claim 10, claim 2 of the reference application teaches the inclusion of the cerium oxide nanoparticulate macro-structure in amounts ranging from 0.01 to 10 wt%, which encompasses the claimed range, establishing a prima facie case of obviousness.
Regarding claim 11, Lee teaches the incorporation of 0.2 g of Tinuvin 5100 in a formulation containing 150 total grams of material ([0069]), which totals to 0.13 wt/% of the paint formulation. It therefore would have been obvious to one of ordinary skill in the art at the time of filing to incorporate 0.13 wt% of Tinuvin 5100 into the formulation of the reference application, which falls within the claimed range of “0.1 % (wt.) to 0.5 % (wt.),” establishing a prima facie case of obviousness.
Regarding claim 12, as described above, claim 1 of the reference application as modified by Lee teaches the incorporation of Tinuvin 5100, which reads on tertiary alkylamine compounds from the claimed list.
Regarding claims 13 and 14, , Claim 4 of the reference application also teaches the incorporation of a polystyrene-polyacrylate copolymer, which reads on the claimed materials.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Burba III (US Patent No. 8,349,764 B2) in view of Burba (2012/0031827 A1) and Brostow (Materials 2020, vol. 13, pp. 1-16).
Regarding claim 1, Burba III teaches an aggregate composition, which can be coated onto a filter substrate for contaminate removal (Abstract and col. 13, lines 16-17 and 29-31). The aggregate composition consists essentially of one or more cerium oxides, a polymeric binder, and an optional flow aid (Abstract and col. 4, lines 26-28). The cerium oxide present in the aggregate composition has a mean particle size of at least about 0.5 nm ranging up to about 1 µm or more (col. 7, lines 52-64), which overlaps the claimed range of “10 nm to 100 nm,” establishing a prima facie case of obviousness. Burba III further teaches the aggregate composition comprises aggregated particulate having a mean particle size of at least about 1 µm (col. 3, lines 29-31), which overlaps the claimed range of “50 nm to 30,000 nm,” establishing a prima facie case of obviousness. The aggregate composition consisting essentially of cerium oxide reads on the claimed “cerium oxide nanoparticles present as a macro-structure.”
Burba III differs from claim 1 because it is silent with regard to the aggregates having a macro-structure pore diameter in the range of 10 nm to 1100 nm.
In the same field of endeavor, Burba teaches a composition comprising a friable metal oxide aggregate containing cerium oxide and a polymeric binder (Abstract, [0002], [0024]). The rare earth metal (cerium oxide) has a mean, median, and P90 particulate size of from about 1 to about 100nm ( [0079]). The aggregates have a mean and/or median pore size from about 1 to about 30 nm ([0011]), which overlaps the claimed range of “10 nm to 1100 nm,” establishing a prima facie case of obviousness. Burba further teaches the pore size significantly contributes to contaminate removal performance of the cerium oxide aggregate, and the greater the pore size the greater the contaminate removal capacity and/or efficiency of the cerium oxide aggregate ([0156]).
The binder comprises an emulsion, preferably an aqueous polyacrylate emulsion (i.e., liquid media) (Burba; [0012], [0070]). The binder emulsion has substantially low viscosity to facilitate mixing of the binder with the cerium oxide particles (Burba; [0073]).
It therefore would have been obvious to one of ordinary skill in the art before the effective filing date to have the polymeric binder of Burba III comprise an aqueous polyacrylate emulsion with substantially low viscosity, in order to facilitate mixing of the binder with cerium oxide particles. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the aggregates of Burba III have a pore size from about 1 to about 30 nm, in order to provide contaminate removal and an efficient cerium oxide aggregate.
Burba III further differs from claim 1 because it is silent with regard to the incorporation of a co-antioxidant. However, Burba does teach the incorporation of additional additives including UV stabilizers (col. 12, lines 24-29), and teaches that polypropylene is an appropriate polymer binder for the inventive composition (col. 20, lines 1-9).
Burba III does not specify any particular UV stabilizers. However, Brostow teaches the UV stabilization of polypropylene using [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate as a hindered amine light stabilizer (Abstract, p. 3, Materials section). [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate contains a secondary amine group incorporated into a cyclic alkyl group with alkyl substituents (c.f. Figure 1(a) on p. 2 of Brostow), and therefore reads on the claimed “co-antioxidant” because the instant claims and specification explicitly state that secondary alkylamine compounds fall within the purview of the claimed “co-antioxidant” materials (c.f. claim 2 and instant Specification at p. 7, first full paragraph). [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate is a secondary alkylamine.
It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). It therefore would have been obvious to one of ordinary skill in the art at the time of filing to incorporate [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate as the UV stabilizer within the formulation of Burba III, as Brostow recognizes it as a suitable UV light stabilizer for polypropylene.
Regarding claim 2, As described above, Burba III as modified teaches the incorporation of [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate, which is a secondary alkylamine, which reads on secondary alkylamines from the claimed listing of co-antioxidants.
Regarding claim 3, as described in the rejection of claim 1, Burba III as modified teaches a composition containing the claimed “cerium oxide nanoparticles” and “co-antioxidant.” Also as described above, Burba III teaches the incorporation of polypropylene as the polymer binder (col. 20, lines 1-9). Burba additionally teaches that polyethylenes such as LLDPE, LDPE, and HPDE, as well as plasticized/unplasticized polyvinylchlorides and polystyrenes are suitable polymers for the polymeric binder (col. 20, lines 1-9). These polymers all read on the claimed “organic compound susceptible to autoxidation” because the instant claim set and the instant Specification both specify that these polymers fall within this category (c.f. claim 8 and p. 7, continuing paragraph of instant Specification).
Regarding claim 4, Burba III teaches that the compositions can comprise less than or more than 10.01% by weight of the insoluble rare-earth metal containing compound (col. 6, lines 62-64). Burba III also teaches that the polymer may be present in amounts up to about 90% by weight, suggesting up to 10% by weight cerium oxide aggregates (col. 8, lines 53-56). In each case, the amount of insoluble rare-earth metal containing compound (cerium oxide) overlaps the claimed range of “0.1 % (wt.) to 5.0% (wt.),” establishing a prima facie case of obviousness.
Regarding claim 5, Brostow teaches formulations containing 0.5 wt%, 0.75 wt.%, 1 wt. %, and 1.25 wt. % of [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate (c.f. p. 3, Table 1, Samples I, IV, VII, and X), all of which fall within the claimed range of “0.1 % (wt.) to 5.0% (wt.),” establishing a prima facie case of obviousness.
Regarding claim 6, as described above, Burba III teaches a series of polymers as the polymer binder, which read on the limitation that the claimed compound is a polymer.
Regarding claims 7 and 8, as described above, Burba III teaches the use of polyethylenes such as LLDPE, LDPE, and HPDE, as well as plasticized/unplasticized polyvinylchlorides and polystyrenes and polypropylene (col. 20, lines 1-9), all of which read on the claimed polymers.
Regarding claim 9, as described above, Burba III as modified contains all of the components within the claimed composition. Burba III further teaches the mixing of the inventive components (col. 13, lines 31-33), and teaches that the additives within the formulation are also included in the aggregate composition (col. 21, claim 35), which reads on the claimed process limitation comprising “placing said nanoporous cerium oxide nanoparticle macro-structure and said co-antioxidant into said organic compound susceptible to autoxidation.”
Regarding claim 10 Burba III teaches that the compositions can comprise less than or more than 10.01% by weight of the insoluble rare-earth metal containing compound (col. 6, lines 62-64). Burba III also teaches that the polymer may be present in amounts up to about 90% by weight, suggesting up to 10% by weight cerium oxide aggregates (col. 8, lines 53-56). In each case, the amount of insoluble rare-earth metal containing compound (cerium oxide) overlaps the claimed range of “0.1 % (wt.) to 5.0% (wt.),” establishing a prima facie case of obviousness.
Regarding claim 11, Brostow teaches formulations containing 0.5 wt%, 0.75 wt.%, 1 wt. %, and 1.25 wt. % of [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate (c.f. p. 3, Table 1, Samples I, IV, VII, and X), all of which fall within the claimed range of “0.1 % (wt.) to 5.0% (wt.),” establishing a prima facie case of obviousness.
Regarding claim 6, as described above, Burba III teaches a series of polymers as the polymer binder, which read on the limitation that the claimed compound is a polymer.
Regarding claim 12, As described above, Burba III as modified teaches the incorporation of [bis(2,2,6,6-tetramethyl-4-piperidyl)] sebacate, which is a secondary alkylamine, which reads on secondary alkylamines from the claimed listing of co-antioxidants.
Regarding claims 13 and 14, as described above, Burba III teaches the use of polyethylenes such as LLDPE, LDPE, and HPDE, as well as plasticized/unplasticized polyvinylchlorides and polystyrenes and polypropylene (col. 20, lines 1-9), all of which read on the claimed polymers.
Response to Arguments
As an initial matter, the Applicant has filed a terminal disclaimer for the instant Application. However, since said Terminal Disclaimer has been disapproved (see Terminal Disclaimer Review Decision, Dated January 11, 2026), the previously applied Double Patenting rejection remains in-place.
Applicant’s arguments, see Applicant’s Remarks, filed December 17, 2025, with respect to 35 USC 112(b) have been fully considered and are persuasive. The 35 USC 112(b) rejection of claims 4 and 10-13 have been withdrawn.
Applicant's arguments regarding 35 USC 103 have been fully considered but they are not persuasive.
Applicant argues that the prior art documents do not teach autoxidation and therefore one having ordinary skill in the art would not reasonably combine the two on the basis thereof.
The instant claims reference autoxidation in the preamble of the claims (e.g., “An autoxidation composition” in claim 1). When reading the preamble in the context of the entire claim, the recitation of autoxidation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claims is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Furthermore, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, 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 the Applicant. See MPEP 2144(IV). While the prior art documents do not contemplate autoxidation, they nonetheless meet all of the compositional limitations of the claimed “autoxidation composition,” and therefore read thereon.
Applicant next argues that improper hindsight has been used in the rationale underpinning the incorporation of the UV stabilizer of Brostow into the formulation of Burba III as modified.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, the Examiner has only relied on the Applicant’s definition of a “co-oxidant” to show that bis(2,2,6,6,-tetramethyl-4-piperidyl)] qualifies as a “co-oxidant.” The Examiner has not relied on any teaching of the instant disclosure to provide motivation to include said compound into the formulation of Burba III as modified. In contrast, as stated previously and above, Burba III teaches the incorporation of UV stabilizers and a polypropylene-based formulation, and Brostow teaches bis(2,2,6,6,-tetramethyl-4-piperidyl)] as a suitable UV stabilizer for polypropylene. As described above and previously, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Furthermore, it is prima facie obvious to select a material based on its art recognized suitability for its intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate bis(2,2,6,6,-tetramethyl-4-piperidyl)] into the formulation of Burba III.
In arguing inadequacy of prior art disclosure, Applicant contends that the broad categorization of UV stabilizers implicates “hundreds if not thousands of UV stabilizer choices.” This argument is tantamount to allegations of insufficient specificity in disclosure. However, the issue of sufficient specificity is relevant to anticipation, not obviousness (see MPEP 2131.03.II.). The use of the UV stabilizer within Brostow is therefore obvious despite the relative breadth of the entire category of UV stabilizers.
Applicant’s remaining arguments are directed towards allegations of unexpected results. However, Applicant merely argues that NCeONP fail to inhibit autoxidation of styrene when a co-antioxidant (gamma-terpene) is not present. Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In this case, the experimental data provides results for a single co-antioxidant (gamma-terpene) despite the claims being open to virtually any pro-aromatic compound (c.f. claim 2). Furthermore, these results only provide data for styrene, whereas the claims are open to a variety of polymers with varying functionalities and structures (c.f. claim 8).
The experimental results are also presumably limited to a single instance of NCeONPs, despite the claims being open to a variety of nanoparticle and macro-structure sizes (c.f. claim 1). Finally, the experimental results include NCeONPs in concentrations in terms of mg/mL, whereas the claims limit the concentration of NCeONps in terms of weight percent (c.f. claim 4) – it is therefore unclear how the experimental data compares to the scope of the compositional amounts thereof. The Applicant thereby asserts that a showing of unexpected results within a narrow portion of the composition as claimed would be sufficient to rebut a prima facie determination of obviousness.
The Applicant is not required to provide data for every possible composition as claimed; however, the experimental data is not reasonably commensurate with the scope of the claims to rebut a prima facie determination of obviousness.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762