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 .
Examiner’s Note
Applicant’s remarks filed 12/30/2025 have been entered. The examiner found Applicant’s remarks persuasive, regarding Hayashida and Itani. Therefore, the previous 35 U.S.C. 103 rejection is withdrawn. Upon further consideration, the following action is a second non-final, as a new set of rejection over Hayashida and Itani is provided as set forth below.
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.
Claim 1, 7, 20, 22, 25, 27, 29-30, 34, and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 21, 23, 28, 30-31, and 33 of copending Application No. 18/715,222 (copending). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
The present claims require a mixed oxide composition comprising a mixed oxide of aluminium, of zirconium, of lanthanum and optionally of at least one rare-earth metal other than cerium and other than lanthanum (denoted REM), wherein proportions by weight of these elements expressed as oxide equivalent with respect to a total weight of the mixed oxide-composition are as follows:
between 20.0 wt% and 45.0 wt% of aluminium;
between 1.0 wt% and 15.0 wt% of lanthanum;
between 0 and 10.0 wt% of the at least one REM, on condition that if the mixed oxide composition comprises more than one REM, this proportion applies to each of these rare- earth metals; and
between 50.0 wt% and 70.0 wt% of zirconium;
wherein the mixed oxide composition is characterized in that after calcination in air at 1100°C for 5 hours, has a specific surface area (BET) ranging from at least 25 m2/g to at most 40 m2/g; and wherein after calcination in air at 950°C for 3 hours, a porosity of the mixed oxide composition determined by N2 porosimetry is such that:
in a domain of pores with a size lower than 100 nm, a porogram of the mixed oxide composition exhibits a peak which is located at a diameter Dp, 950°C/3h between 10 and 25 nm;
a ratio V<30nm,950°C/3h / Vtotal, 950°C/3h is greater than or equal to 0.85;
Vtotal,950°C/3h is greater than or equal to 0.35 ml/g;
wherein V<30 nm, 950C/3h and Vtotal, 950C/3h denote a pore volume for pores with a size lower than 30 nm and a total pore volume of the mixed oxide composition after calcination in air at 950°C for 3 hours, respectively (claim 1).
While the copending claims requires a mixed oxide of aluminium, of zirconium, of lanthanum, and optionally of at least one rare-earth metal other than cerium and other than lanthanum (Denoted REM), the proportions by weight of these elements being as follows:
between 20.0wt% and 45.0wt% of aluminium, between 20.0wt% and 40.0wt%, or between 20.0wt% and 35.0wt%;
between 1.0wt% and 15.0wt% of lanthanum, between 1.0wt% and 10.0wt%, between 1.0wt% and 7.0wt%, or between 2.0wt% and 7.0wt%’
between 0 and 10.0wt%, between 1.0wt% and 10.0wt%, between 1.0wt% and 7.0wt%, or between 2.0wt% and 7.0wt% for the rare-earth metal other than cerium and other than lanthanum, on condition that if the mixed oxide comprises more than one rare-earth metal other than cerium and other than lanthanum, this proportion applies to each of these rare-earth metals optionally wherein the total proportion of the rare-earth metal other than cerium and other than lanthanum is less than 25.0wt%, or less than 20%;
between 50.0wt% and 70.0wt% , or between 55.0wt% and 65.0wt% of zirconium;
these proportions being expressed as oxide equivalent with respect to the total weight of the mixed oxide,
wherein after calcination in air at 1100°C for 5 hours, the specific surface area (BET) of the mixed oxide is at least 25.0 m2/g;
and in that after calcination in air at 950°C for 3 hours, the porosity of the mixed oxide determined by N2 porosimetry is such that:
in the domain of the pores with a size lower than 100 nm, the porogram of the mixed oxide exhibits a peak with is located at a diameter Dp,950°C/3h between 15 and 30 nm;
the ratio V<40 nm, 950°C/3h/ Vtotal, 950°C/3h is greater than or equal to 0.80, greater than or equal to 0.85, or greater than or equal to 0.90;
Vtotal, 950°C/3h is greater than or equal to 0.35 ml/g, greater than or equal to 0.40 ml/g, or greater than or equal to 0.45 ml/g;
V<40 nm, 950°C/3h, Vtotal, 950°C/3h denoting respectively the pore volume for the pores with a size lower than 40 nm and the total pore volume of the mixed oxide after calcination in air at 950°C for 3 hours;
The mixed oxide being further characterized by one or more of the three characteristics (i), (ii), (iii) below:
(i) Δ is lower than 82.0%, Δ being calculated by the following formula:
Δ = (S950°C/3h – S1200°C/5h)/ S950°C/3h x 100;
(ii) Δ* is lower than 55.0%, Δ* being calculated by the following formula:
Δ* = (S950°C/3h – S1100°C/5h)/ S950°C/3h x 100;
(iii) S1200°C/5h is strictly higher than 15.0 m2/g.
wherein S950°C/3h, S1100°C/5h, and S1200°C/5h denotes respectively the BET specific surface areas for the mixed oxide after calcination in air at respectively 950°C for 3 hours, 1100°C for 5 hours and 1200°C for 5 hours (copending, claim 1) which corresponds to claims 1 and 25 of the instant application.
Further, the following claims correspond:
claim 10 of the copending corresponds to claim 7 of the instant application;
claim 21 of the copending corresponds to claim 20 of the instant application;
claim 23 of the copending corresponds to claim 22 of the instant application;
claim 28 of the copending corresponds to claim 27 of the instant application;
claim 30 of the copending corresponds to claim 29 of the instant application;
claim 31 of the copending corresponds to claim 30 of the instant application; and
claim 33 of the copending corresponds to claims 34 and 36 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-2, 4, 7, 10, 12, 20, 22, 25, 27, 29-30, 34, 36, 40, and 48 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 1 recites, “wherein the mixed oxide composition is characterized in that”. However, it is not clear what is meant by "characterized in that" or how the mixed oxide must be changed or modified in order to make it characterized. It is advised to delete “characterized” in the claim.
Regarding dependent claims 2, 4, 7, 10, 12, 20, 22, 25, 27, 29-30, 34, 36, 40, and 48, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 10 recites “the crystalline phase is characterized by a peak”. However, it is not clear what is meant by "characterized by” or how the mixed oxide must be changed or modified in order to make it characterized. It is advised to delete “characterized” in the claim.
Claims 22, 29, and 30 recite “the mixed oxide according to claim 1 characterized in that”. However, it is not clear what is meant by "characterized in that" or how the mixed oxide must be changed or modified in order to make it characterized. It is advised to delete “characterized” in the claim.
Claim 40 recites “the peak is a single peak characterized by”. However, it is not clear what is meant by "characterized by” or how the peak must be changed or modified in order to make it characterized. It is advised to delete “characterized” in the claim.
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 1-2, 4, 7, 10, 12, 20, 22, 25, 27, 29-30, 34, 36, 40 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashida et al. (US 2020/0399139 A1) (Hayashida).
Regarding claim 1, Hayashida teaches an alumina-based composite oxide (i.e., mixed oxide) most preferably comprising 30% or more and 90% or less of alumina; 0% or more and 65% or less of zirconia; and 0% or more and 10% or less of rare-earth metals including lanthanum (Hayashida, [0044]; [0071]), which overlap with the ranges of the presently claimed (i.e., a mixed oxide composition comprising a mixed oxide of aluminium, of zirconium, and of lanthanum).
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).
Given that Hayashida discloses the composite oxide that overlaps the presently claimed mixed oxide composition, including lanthanum, it therefore would be obvious to one of ordinary skill in the art, to use the lanthanum, which is both disclosed by Hayashida and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further, while Hayashida does not explicitly teach wherein the mixed oxide composition is characterized in that after calcination in air at 1100°C for 5 hours, has a specific surface area (BET) ranging from at least 25 m2/g to at most 40 m2/g; and wherein after calcination in air at 950°C for 3 hours, a porosity of the mixed oxide composition determined by N2 porosimetry is such that:
in a domain of pores with a size lower than 100 nm, a porogram of the mixed oxide composition exhibits a peak which is located at a diameter Dp, 950°C/3h between 10 and 25 nm;
a ratio V<30nm,950°C/3h / Vtotal, 950°C/3h is greater than or equal to 0.85;
Vtotal,950°C/3h is greater than or equal to 0.35 ml/g;
wherein V<30 nm, 950C/3h and Vtotal, 950C/3h denote a pore volume for pores with a size lower than 30 nm and a total pore volume of the mixed oxide composition after calcination in air at 950°C for 3 hours, respectively;
as Hayashida teaches a composite oxide that is substantially identical to the claimed mixed oxide composition, it is clear that the composite oxide of Hayashida would be characterized in that after calcination in air at 1100°C for 5 hours, has a specific surface area (BET) ranging from at least 25 m2/g to at most 40 m2/g; and wherein after calcination in air at 950°C for 3 hours, a porosity of the mixed oxide composition determined by N2 porosimetry is such that:
in a domain of pores with a size lower than 100 nm, a porogram of the mixed oxide composition exhibits a peak which is located at a diameter Dp, 950°C/3h between 10 and 25 nm;
a ratio V<30nm,950°C/3h / Vtotal, 950°C/3h is greater than or equal to 0.85;
Vtotal,950°C/3h is greater than or equal to 0.35 ml/g;
wherein V<30 nm, 950C/3h and Vtotal, 950C/3h denote a pore volume for pores with a size lower than 30 nm and a total pore volume of the mixed oxide composition after calcination in air at 950°C for 3 hours, respectively.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 2, Hayashida teaches the mixed oxide composition according to claim 1, wherein the alumina-based composite oxide (i.e., mixed oxide) most preferably comprising 30% or more and 90% or less of alumina; 0% or more and 37% or less of ceria (i.e., can be 0% which falls within the claimed range); 0% or more and 65% or less of zirconia; 0% or more and 10% or less of rare-earth metals including lanthanum; and 0% or more and 20% or less of others (i.e., can be 0% which falls within the claimed range) (Hayashida, [0044]; [0071]) (i.e., consists of a combination of oxides of aluminium, of zirconium, and of lanthanum).
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 4, Hayashida teaches the mixed oxide composition according to claim 1, wherein an alumina-based hydroxide is obtained in step 3 (Hayashida, [0024]) (i.e., the components including alumina, zirconium, and lanthanum are oxides and hydroxides).
Regarding claims 7, 10, 12, 34, 36, and 40, Hayashida teaches the mixed oxide composition according to claim 1, wherein as Hayashida teaches the composite oxide that is substantially identical to the claimed mixed oxide, the composite oxide of Hayashida would inherently possess:
after calcination in air:
at 1100°C for 5 hours, a mean size of crystallites of a crystalline phase based on zirconium oxide is at most 28 nm; and/or
at 1200°C for 5 hours, a mean size of crystallites of a crystalline phase based on zirconium oxide is at most 44 nm (claim 7);
after calcination in air of the mixed oxide composition, a crystalline phase forms, wherein the crystalline phase is characterized by a peak located at a 2θ angle between 29° and 31° (claim 10);
after calcination in air of the mixed oxide composition, a crystalline phase exhibiting a tetragonal structure forms, wherein the crystalline phase comprises zirconium oxide, lanthanum and optionally the rare-earth metal(s) other than cerium and other than lanthanum (claim 12);
the specific surface area (BET) after calcination in air at 950°C for 3 hours ranges from at least 65 m2/g to at most 110 m2/g (claim 34);
the specific surface area (BET) after calcination in air at 1200°C for 5 hours is at least 9 m2/g (claim 36); and
the peak is a single peak characterized by a width which is at most 10 nm (claim 40).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 20, Hayashida teaches the mixed oxide composition according to claim 1, wherein alumina is 30% or more and 90% or less and zirconia is 0% or more and 65% or less (Hayashida, [0044]), which overlaps with the presently claimed weight percentage 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 22, Hayashida teaches the mixed oxide composition according to claim 1, wherein the rare-earth metals are 0% or more and 10% or less of the composite oxide (Hayashida, [0044]), which falls within the claimed range.
Regarding claim 25, Hayashida teaches the mixed oxide composition according to claim 1, wherein rare-earth metals, including lanthanum, are 0% or more and 10% or less of the composite oxide (Hayashida, [0044]; [0071]), which overlaps with the range of the presently claimed.
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 27, Hayashida teaches the mixed oxide composition according to claim 1, wherein the rare-earth element may be at least one of Y, Nd, and Pr (Hayashida, [0071]).
Regarding claims 29 and 30, Hayashida teaches the mixed oxide composition according to claim 1, wherein ceria may be 0% (Hayashida, [0044]), which overlaps with the ranges of the presently claimed.
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).
Claims 1, 4, 7, 10, 12, 20, 22, 25, 27, 34, 36, 40, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Itani et al. (WO 2018/115436 A1) (Itani)
It is noted that when utilizing WO 2018/115436 A1, the disclosures of the reference are based on US 2020/0188885 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2018/115436 A1 are found in US 2020/0188885 A1.
Regarding claim 1, Itani teaches a mixed oxide comprising between 20% and 60% of aluminium; between 15% and 35% of cerium; between 1% and 10% of lanthanum; between 0 and 10% of rare-earth metals other than cerium and lanthanum; and between 15% and 50% of zirconium (Itani, [0018]-[0023]), which overlaps with the ranges of the presently claimed. Further, Itani teaches after calcination in air at a temperature of 1100°C for 5 hours, the BET specific surface area is at least 35 m2/g (Itani, [0023]-[0026]), which overlaps with the range of the presently claimed
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).
While Itani does not explicitly teach wherein after calcination in air at 950°C for 3 hours, a porosity of the mixed oxide composition determined by N2 porosimetry is such that:
in a domain of pores with a size lower than 100 nm, a porogram of the mixed oxide composition exhibits a peak which is located at a diameter Dp, 950°C/3h between 10 and 25 nm;
a ratio V<30nm,950°C/3h / Vtotal, 950°C/3h is greater than or equal to 0.85;
Vtotal,950°C/3h is greater than or equal to 0.35 ml/g;
wherein V<30 nm, 950C/3h and Vtotal, 950C/3h denote a pore volume for pores with a size lower than 30 nm and a total pore volume of the mixed oxide composition after calcination in air at 950°C for 3 hours, respectively;
as Itani teaches a mixed oxide that is substantially identical to the claimed mixed oxide composition, it is clear that the mixed oxide of Itani would be characterized in that after calcination in air at 1100°C for 5 hours, has a specific surface area (BET) ranging from at least 25 m2/g to at most 40 m2/g; and wherein after calcination in air at 950°C for 3 hours, a porosity of the mixed oxide composition determined by N2 porosimetry is such that:
in a domain of pores with a size lower than 100 nm, a porogram of the mixed oxide composition exhibits a peak which is located at a diameter Dp, 950°C/3h between 10 and 25 nm;
a ratio V<30nm,950°C/3h / Vtotal, 950°C/3h is greater than or equal to 0.85;
Vtotal,950°C/3h is greater than or equal to 0.35 ml/g;
wherein V<30 nm, 950C/3h and Vtotal, 950C/3h denote a pore volume for pores with a size lower than 30 nm and a total pore volume of the mixed oxide composition after calcination in air at 950°C for 3 hours, respectively.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 4, Itani teaches the mixed oxide composition according to claim 1, wherein Al, Ce, La, REM, and Zr are generally in the form of oxides but may be present at least partly as hydroxides or oxyhydroxides (Itani, [0029]).
Regarding claims 7, 12, 34, 36, and 40, Itani teaches the mixed oxide composition according to claim 1, wherein after calcination in air at 1100°C for 5 hours, the average crystallite size is at most 30 nm (Itani, [0025]), which overlaps with the range of the presently claimed.
Further, as Itani teaches the mixed oxide that is substantially identical to the claimed mixed oxide, the composite oxide of Itani would inherently possess:
after calcination in air:
at 1100°C for 5 hours, a mean size of crystallites of a crystalline phase based on zirconium oxide is at most 28 nm; and/or
at 1200°C for 5 hours, a mean size of crystallites of a crystalline phase based on zirconium oxide is at most 44 nm (claim 7);
after calcination in air of the mixed oxide composition, a crystalline phase exhibiting a tetragonal structure forms, wherein the crystalline phase comprises zirconium oxide, lanthanum and optionally the rare-earth metal(s) other than cerium and other than lanthanum (claim 12);
the specific surface area (BET) after calcination in air at 950°C for 3 hours ranges from at least 65 m2/g to at most 110 m2/g (claim 34);
the specific surface area (BET) after calcination in air at 1200°C for 5 hours is at least 9 m2/g (claim 36); and
the peak is a single peak characterized by a width which is at most 10 nm (claim 40).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 10, Itani teaches the mixed oxide composition according to claim 1, wherein after calcination in air a crystalline phase has a peak that forms located at a 2θ angle between 28° and 32° (Itani, [0038]), which overlaps with the range of the presently claimed.
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 20, Itani teaches the mixed oxide composition according to claim 1, wherein the total proportion of aluminium and zirconium in the mixed oxide is greater than or equal to 50% (Itani, [0037]), which overlaps with the range of the presently claimed.
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 22, Itani teaches the mixed oxide composition according to claim 1, wherein the proportion of rare-earth metal is 0 to 10% by weight and if there is more than one rare-earth metal, the total proportion is less than 15% (Itani, [0022]), which falls within the claimed range.
Regarding claim 25, Itani teaches the mixed oxide composition according to claim 1, wherein the mixed oxide comprises between 1% and 10% of lanthanum and between 0 and 10% of the rare-earth metal other than cerium and lanthanum (Itani, [0021]-[0022]), which overlaps with the ranges of the presently claimed.
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 27, Itani teaches the mixed oxide composition according to claim 1, wherein the mixed oxides may also comprise one or more rare-earth metals other than cerium or lanthanum (REM). The rare-earth metal may for example be chosen from yttrium, neodymium or praseodymium (Itani, [0034]).
Regarding claim 48, Itani teaches the mixed oxide composition according to claim 1, wherein the mixed oxide comprises a washcoat which comprises at least one dispersed precious metal such as Pt, Rh, or Pd (Itani, [0140]).
Response to Arguments
In response to applicant’s remarks regarding the 103 rejections over Hayashida and Itani, the arguments are found persuasive and a new set of rejection over Hayashida and Itani are set forth above.
In response to applicant’s amendments, the previous claim objections are withdrawn from the record. However, after further consideration, new 35 U.S.C. 112(b) rejections are set forth above.
In response to Applicants' remark, regarding the double patenting rejection to be held in abeyance, Applicants’ request that the double patenting rejections to be held in abeyance is noted. However, the double patenting rejection will be maintained until such time as the rejection is properly overcome (see MPEP IB and IB1).
Applicant primarily argues:
“With regards to Hayashida, Applicant asserts that even though Hayashida refers to mixed oxides which have compositions that are in accordance with the compositions of the instant application, as acknowledged by the Examiner, Hayashida does not disclose a mixed oxide having a specific surface area (BET) ranging from at least 25 m2/g to at most 40 m2/g after calcination in air at 1100°C for 5 hours.
Additionally, there is no indication in Hayashida that after calcination in air at 950°C for 3 hours, the porosity of the mixed oxide composition determined by N2 porosimetry is such that:
- in a domain of pores with a size lower than 100 nm, a porogram of the mixed oxide composition exhibits a peak which is located at a diameter Dp, 950°C/3h between 10 and 25 nm;
- a ratio V<30 nm, 950°C/3h / Vtotal, 950°C/3h is greater than or equal to 0.85;
- Vtotal, 950°C/3h is greater than or equal to 0.35 ml/g;
wherein V<30 nm, 950°C/3h and Vtotal, 950°C/3h denote a pore volume for pores with a size lower than 30 nm and a total pore volume of the mixed oxide composition after calcination in air at 950°C for 3 hours, respectively.
Hence, there is no indication in Hayashida that the mixed oxides disclosed therein have the required thermal stability according to the claimed invention, even though Hayashida's goal is to provide a mixed oxide having a good heat resistance.”
Remarks, p. 13-14
The examiner respectfully traverses as follows:
Firstly, it is noted that the claims are drawn to a product and not to a process of making or process of using. Although Hayashida does not explicitly teach calcining the composite oxide as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Hayashida meets the requirements of the claimed product, Hayashida clearly meets the requirements of the present claim.
Further, as the composite oxide of Hayashida is substantially identical to the mixed oxide as presently claimed, it is clear that the properties after calcination of the composite oxide of Hayashida would be inherent.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Applicant further argues:
“Furthermore, as the Applicant notes, Itani does not provide what Hayashida lacks with regards to claim 1, as amended, for the reasons discussed below.
First, the composition of the mixed oxide of Itani differs from the composition of Hayashida and differs from the claimed composition. For example, Itani's mixed oxide has a zirconium content of 15 to 50 wt.% instead of 50 wt.% to 70 wt. % as recited by amended claim 1. As the Applicant notes, even though Itani refers to a specific surface area which is in the claimed range, there is no indication in Itani how it is possible to obtain a mixed oxide having the composition as described in Hayashida, but the specific surface area as described in Itani.
Additionally, Applicant asserts that Itani does not disclose or suggest a production process including the heat ageing step according to the instant application to obtain a mixed oxide having the claimed composition and the desired thermal stability (see Itani, paragraphs [0070]- [0077]). Rather, Itani discloses that the optional drying step (a5) is preferably carried out by spray drying. See Itani, page 8, paragraph [0132]. Applicant asserts that there is no indication that a heat aging step at a temperature of at least 130°C should be carried out. Therefore, Applicant contends that when looking at Itani's teachings, one of ordinary skill in the art would not find a hint which leads him to the solution of the claimed composition.”
Remarks, p. 18
The examiner respectfully traverses as follows:
Firstly, the range of zirconium in Itani overlaps with the range of the presently claimed as there may be 50 wt%. 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).
Secondly, it is noted that the claims are drawn to a product and not to a process of making or process of using. Although Itani does not explicitly teach heat ageing in the production process as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Itani meets the requirements of the claimed product, Itani clearly meets the requirements of the present claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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