DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Claims 15, 18-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/12/2025.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-5, 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jiao et al. (CN110252275B), hereinafter ‘Jiao’.
Regarding Claim 1, Jiao discloses a cerium-zirconium-based composite oxide ([0052]), comprising
1%-80% by mole of cerium oxide; 15%-80% by mole of zirconium oxide; and 0%-20% by mole of other oxides ([0052]).
Further, Jiao discloses the gradient distribution further comprises a gradient distribution of one or more elements among the rare earth elements except cerium and/or the non-rare earth elements except zirconium, and this gradient distribution indicates that the content of elements decreases or increases gradually from inside to outside in the radial direction of grains ([0053]: lanthanum and praseodymium, elements belonging to the rare earth elements, are added only to the second precipitation step – as such, the concentration of these rare earth oxides will be highest in the outer layer of the formed composite, and their respective concentrations will increase gradually from inside to outside in the radial direction of grains given there is no lanthanum or praseodymium present in the first precipitation step, which forms the inside of the composite).
Further regarding Claim 1, while Jiao is silent regarding the disclosed composite oxide having “a gradient distribution of elements, wherein the cerium element and the zirconium element have a gradient distribution from inside to outside in grains, the content of cerium oxide on a grain surface of the composite oxide is higher than that in the overall composite oxide, the content of zirconium oxide on the grain surface is lower than that in the overall composite oxide, the content of cerium increases gradually from inside to outside along the radial direction of grains, and the content of zirconium decreases gradually from inside to outside along the radial direction of grains”, the composite oxide of Jiao and that of the instant invention are made by substantially similar processes.
Namely, Jiao discloses a method of preparation of the disclosed composite, comprising forming a zirconium-rich solution by mixing a large amount of zirconium oxychloride (3.53 mol) with a relatively small amount of cerium ammonium nitrate (0.113 mol) to form an alkaline solution and form a precipitate, followed by forming a cerium-rich solution by adding to this resulting solution a large amount of cerium ammonium nitrate (1.02 mol) with a relatively small amount of zirconium oxychloride (0.39 mol) and adjusting the pH of the solution to form a second precipitate – by this method, the zirconium-rich solution comprises 90.1 mol% of the total zirconium in the composite by mole, and the second cerium-rich solution comprises 90.0 mol% of the total cerium in the composite.
This method is substantially similar to the method disclosed at [0063] of the published specification, which recites: “…the method includes…an alkaline matter is mixed with a mixed solution A including a cerium salt and a zirconium salt…followed by stirring and reacting to obtain a slurry containing a precipitate of the above metals…[t]he zirconium in the mixed solution A is more than 50%...of the total zirconium by mole…a mixed solution B including the cerium salt and the zirconium salt…are added to the slurry obtained in step (a) for precipitation…the cerium in the mixed solution B is more than 50%…of the total cerium by mole.” Further, it is disclosed at [0072] of the published specification that “a cerium-zirconium-based composite oxide with gradient distribution of elements is synthesized by a step-by-step precipitation method” according to the procedure above.
Given the similarities of the process of making between the prior art and the claimed invention, the instant fact pattern resembles that of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 483 (CCPA 1977), wherein the court held that “…where the claimed and prior art products are... produced by identical or substantially identical processes...a prima facie case of either anticipation or obviousness has been established.” Furthermore, as a practical matter, it is noted that the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith, In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) – as such, determinations of properties not disclosed by the prior art are made based on a preponderance of the evidence provided in both the prior art and the instant disclosure.
Therefore, based on the preponderance of evidence, with particular attention to the identical step-by-step precipitation method disclosed in both the prior art and the claimed invention, there is a reasonable prima facie basis to conclude that the composite oxide of Jiao would possess a gradient distribution of elements, wherein the cerium element and the zirconium element have a gradient distribution from inside to outside in grains, the content of cerium oxide on a grain surface of the composite oxide is higher than that in the overall composite oxide, the content of zirconium oxide on the grain surface is lower than that in the overall composite oxide, the content of cerium increases gradually from inside to outside along the radial direction of grains, and the content of zirconium decreases gradually from inside to outside along the radial direction of grains in the same way as claimed, absent evidence to the contrary, as the products were made in a substantially similar way, and as such cannot have mutually exclusive properties – see MPEP 2112.01(I).
Regarding Claim 4, Jiao discloses the composite oxide comprises 30%-60% by mole of cerium oxide and 30%-60% by mole of zirconium oxide ([0052]).
Regarding Claim 5, 7-8, 11, Jiao discloses the other oxides are one or a combination of more than one of rare earth elements except cerium and non-rare earth metal elements except zirconium, the content of the other oxides in the composite oxide is 2%-15% by mole, the content of oxides of the rare earth elements except cerium in the other oxides is 70%-100% by mole, and the rare earth element oxides comprise lanthanum and praseodymium ([0052]: the composite oxide comprises 5% by mole lanthanum oxide and 5% by mole praseodymium oxide – lanthanum oxide and praseodymium oxide are considered rare earth element oxides, and further they comprise 100% of the other oxides).
Regarding Claim 10, Jiao discloses a gradient distribution of the rare earth elements except cerium, in which the content of elements increases gradually from inside to outside in the radial direction of grains ([0053]: lanthanum and praseodymium are added only to the second precipitation step – as such, the concentration of these oxides will be highest in the outer layer of the formed composite, and their respective concentrations will increase gradually from inside to outside in the radial direction of grains given there is no lanthanum or praseodymium present in the first precipitation step, which forms the inside of the composite).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jiao et al. (CN110252275B), hereinafter ‘Jiao’.
Regarding Claim 12, Jiao discloses that the composite oxide has a specific surface area of 35-55 m2/g after heat treatment at 1100° C. in air for 4 hours ([0012]: the specific surface area is at least 30 m2/g after heat treatment at 1100 °C - as set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) – as such, the instant claimed range is obvious over the prior art range)).
Further regarding Claim 12, Jiao is silent regarding the specific surface area of the composite after heat treatment at 1000° C in air for 4 hours; however, Jiao does disclose that the specific surface area of the composite is at least 30 m2/g after heat treatment at 1100 °C; further, it is known, and further shown by Jiao, that heat treatment at high temperatures results in a reduction in surface area ([0008], [0012]: the specific surface area after heat treatment at 850 °C is at least 80 m2/g, but the specific surface area is at least 30 m2/g after heat treatment at 1100 °C; [0006]: The specific surface area of the obtained cerium-zirconium composite after calcination at 700°C for 4 hours is about 70 m2/g, and the specific surface area after aging at 1100°C for 4 hours is about 20 m2/g). Further, given that the specific surface area of the composite after heat treatment at 850 °C is at least 80 m2/g, yet the specific surface area is at least 30 m2/g after heat treatment at 1100 °C, the specific surface area after heat treatment at 1000 °C must be lower than that after being treated at 850 °C and also higher than that after being treated at 1100 °C.
Accordingly, given that the specific surface area of the composite is at least 30 m2/g after heat treatment at 1100 °C and at least 80 m2/g after heat treatment at 850 °C, and given that heat treatments at higher temperatures reduce specific surface area to a greater degree than heat treatments at lower temperatures, the specific surface area of the composite of Jiao after heat treatment at 1000 °C must be within the range of 30 to 80 m2/g – as set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) – as such, the instant claimed range is obvious over the prior art range.
Regarding Claim 13, Jiao discloses the composite oxide has pores of 2 nm-100 nm, a total pore volume between 0.1 mL/g and 0.5 mL/g, and a static oxygen storage capacity of more than or equal to 500 μmol O2/g ([0008]: the composite has pores between 1 and 7 nm and an oxygen storage capacity between 500 to 1200 μmol O2/g; further, the pore volume is between 0.5 and 0.6 - as set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) – as such, the instant claimed range is obvious over the prior art range).
Regarding Claim 14, Jiao discloses after calcination at 1100° C. in air for 4 hours, the composite oxide has pores of 10 nm-30 nm and a total pore volume between 0.03 mL/g and 0.2 mL/g ([0012]: the composite has pores between 1 and 60 nm, and the pore volume is between 0.5 and 0.6 - as set forth in MPEP 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) – as such, the instant claimed range is obvious over the prior art range).
Further regarding Claim 14, Jiao is silent regarding the static oxygen storage capacity of the composite after calcination at 1100 °C in air for 4 hours; however, as disclosed at [0044] and [0067] of the instant published specification, by the particular two-step precipitation method in which a cerium gradient is formed, an increases the content of cerium on the surface layer of grains results in improvement of utilization of cerium, and improves the oxygen storage capacity and the oxygen storage and release rate. As such, given that the composite of Jiao is also made by such a process, it would be expected that the static oxygen storage capacity of the composite of Jiao after calcination at 1100° C would exhibit the same or nearly the same static oxygen storage capacity of the claimed composite after calcination at 1100° C, absent evidence to the contrary, as both the claimed composite and the composite of Jiao possess high amounts of surface cerium that would effectively act as oxygen storage materials, thereby resulting in the claimed static oxygen storage capacity.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jiao et al. (CN110252275B), hereinafter ‘Jiao’, in view of Cui et al. (CN103182302B), hereinafter ‘Cui’.
Regarding Claim 6, while Jiao discloses the cerium-zirconium composite as discussed above, and further discloses that an object of the invention is to produce a composite having a high oxygen storage capacity ([0036]), Jiao does not disclose that the composite oxide contains a hafnium oxide, and the content of the hafnium oxide is 0.05%-2% by mole.
Cui discloses rare earth zirconium-based composite oxide and a preparation method thereof, wherein the primary rare earth metal is cerium ([0012]). A person of ordinary skill in the art would have recognized Cui as analogous to Jiao, as both references are drawn to the same field of endeavor as the claimed invention, the manufacture of cerium-zirconium composites - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Cui discloses that 0.1-5 mol% of elements such as hafnium may be added to the disclosed cerium-zirconium composite to improve the oxygen storage, release capacity and high temperature thermal stability of rare earth zirconium, especially cerium zirconium-based composite oxides ([0019]).
Accordingly, given that Jiao is concerned with the manufacture of a high oxygen storage capacity cerium-zirconium composite, and given that Cui discloses that the addition of hafnium in the amount of 0.1-5 mol% is known to improve the oxygen storage, release capacity and high temperature thermal stability of rare earth zirconium, especially cerium zirconium-based composite oxides, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to add the disclosed amount of hafnium to the composite disclosed by Jiao, as such an addition would have increased the oxygen storage capacity of the resulting composite.
Response to Arguments
Applicant’s arguments, filed **/**/****, are acknowledged.
With respect to arguments with regard to the rejection of Claim(s) under ***, the arguments have been fully considered and are persuasive. These rejections have been withdrawn.
With respect to arguments in regard to prior art rejections under section ***, Applicant’s arguments have been fully considered but are not persuasive. These rejections, as repeated above, are maintained.
Applicant argues 1), that the phase structure of the product obtained by the present invention is completely different from that of Jiao; 2) that the preparation process of the present invention is completely different from Jiao, and the structure of the composite oxides formed is also completely different; 3) that the present invention is different from the inventive concept of Jiao; 4) that the post treatment method of the present invention is different from Jiao, and 5) that the instant invention has beneficial technical effects relative to the existing technology [of the prior art].
Regarding 1), it is noted that the features upon which applicant relies (i.e., the phase of the resulting composite oxide) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, this argument is not persuasive, as the instant claim does not require any particular phase as argued.
Regarding 2), the argument is not considered persuasive, as applicant is relying on a narrow embodiment of the instant invention to exclude that disclosed by the prior art. In particular, Applicant argues that “the molar proportion of zirconium (90%-100% of the total zirconium content) added to the above-mentioned Jiao during the first precipitation far exceeds the “molar proportion of zirconium (60%-80% of the total zirconium content) in the mixture A””, and argues the same for the content of cerium in mixture B; however, it is clear from the instant specification that molar amounts beyond 60%-80% are encompassed by the instant invention and would result in a composite having the claimed gradient structure. Namely, looking to [0032] of the instant published specification, it is disclosed that “the zirconium in the mixed solution A is more than 50% by mole of the total zirconium content, and the cerium in the mixed solution B is more than 50% by mole of the total cerium content.” Looking then to [0033], it is disclosed that “In order to obtain the cerium zirconium composite oxide with the inner and outer layers are tetragonal phase structure, the zirconium in the mixed solution A is 60%-80% by mole of the total zirconium content, and the cerium in the mixed solution B is 60%-80% by mole of the total cerium content.” Clearly, then, the use of solutions having 60%-80%, as argued by applicant, are necessary in order to obtain cerium zirconium composite oxide with the inner and outer layers are tetragonal phase structure – this is not a claimed feature, and therefore it is not necessary for the prior art to meet these requirements to meet the claimed features. Given that the invention is disclosed as generally requiring “zirconium in the mixed solution A is more than 50% by mole of the total zirconium content, and the cerium in the mixed solution B is more than 50% by mole of the total cerium content”, and that Jiao meets these amounts, it is maintained that the use of such solutions in a process identical to that of the instant invention would result in a composition the same or nearly the same as that claimed, absent any further identified differences in the processes of making between the instant invention and the prior art.
Regarding 3), the argument is not considered persuasive, as the “inventive concept” as discussed by Applicant does not show that the product of the prior art would not meet the instant claimed composite – while Applicant argues that “the inventive concept of Jiao is to precipitate as much zirconium as possible in step 1), and then introduce cerium as well as rare-earth elements other than cerium in step 2)”, this does not preclude the “inventive concept” asserted by Applicant of preparing a composite with an elemental gradient as claimed. Without an evidence-based showing that such a gradient would not form, this argument is considered merely an argument of counsel that may not take the place of evidence required in the instant case – see MPEP 2145.
Regarding 4), the same reasoning as applied to 2) applies in the instant case. Namely, while Applicant has pointed out a difference in the processes of making, Applicant has not materially demonstrated that such a difference would result in a composite not having the features required by Claim 1. After careful consideration of Applicant’s argument regarding this point and consideration of portions of the specification discussing post treatment, it is not clear what technical effect, if any, would result from post treatment of the composite with respect to those features of Claim 1. Without particular showing of such technical effects, it is maintained that the use of such solutions in a process identical to that of the instant invention would result in a composition the same or nearly the same as that claimed, even in the absence of an aging step.
Regarding 5), the argument is not considered persuasive, as showings of secondary considerations, such as those beneficial technical effects relative to the existing technology presented by Applicant, are not germane to rejections based on anticipation. See In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973); MPEP 2131.04.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20120129681A1 discloses the manufacture of Ce:Zr composites having a gradient composition as claimed – see Figures 1-3, Claims.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/L.E.L./ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738
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