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 .
Miscellany
Abbreviations used herein are as follows: upstream side coating layer “UCL”, upstream side upper coating layer “UUCL”, upstream side lower coating layer “ULCL”, downstream side coating layer “DCL”, downstream side upper coating layer “DUCL”, downstream side lower coating layer “DLCL”.
Drawings
The 4-19-23 drawings are provisionally accepted. Due to their complexity and/or numerosity, applicant’s assistance is requested to ensure that all component labels therein are correctly identified in the specification and vice versa. 37 CFR 1.3 (courtesy required).
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 10-27 are 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 10 recites that a) the catalyst layers “each include a precious metal catalyst selected from among Pt, Pd and Rh,” b) {[Pt and/or Pd] in UUCL & DLCL} > {[Pt and/or Pd] in ULCL & DUCL}, and c) {[Rh] in ULCL & DUCL} > {[Rh] in UUCL & DLCL}. However, to the extent that condition a) may be satisfied by only Rh, condition b) will not be met, as 0% Pt & 0% Pd throughout all catalyst layers will not satisfy its required inequality detailed above; condition c) will also not be able to be met if condition a) is met with only Pt and/or Pd (i.e. no Rh is present). In other words, while condition a) only requires one of Pt, Pd, and Rh to be present, condition b) requires at least Pt & Pd be present, and condition c) requires Rh be present. The foregoing inconsistencies and/or contradictions create confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), rendering claim 1 rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. See Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366-67 (Fed. Cir. 2016) (stating that an internally contradictive/inconsistent claim is indefinite and thus properly rejected as such under 35 U.S.C. 112(b)/2nd par.), and Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (citing Columbia v. Symantec). See also MPEP 2173.05(c).
Applicant is hereby advised that, as independent claim 1 is rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
Claim 12 recites “the amount of ceria” and depends from claim 10, but claim 10 does not recite “ceria” or the like. Claim 12 is thus rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because its quoted recitation lacks sufficient antecedent bases.
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.
Claims 10, 15, 18, 22, and 25-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2009248057A (2017) (incl. Engl. machine transl’n “EMT”; see applicant’s 9-19-24 IDS) (“’057”). Regarding claim 10, ‘057 discloses a catalyst composition comprising a substrate 1, UCL 21, a UUCL 31 comprising Pt, a ULCL 32 comprising Rh, DCL 22, DUCL 41 comprising Rh, and a DLCL 42 comprising Pt; {[Pt and/or Pd] in UUCL & DLCL} > {[Pt and/or Pd] in ULCL & DUCL} and {[Rh] in ULCL & DUCL} > {[Rh] in UUCL & DLCL} are both met. See ‘057 at, e.g., EMT Overview; par. 94; clms. 1-6; Fig. 1.
Regarding claim 15, LUCL21 (i.e. L2) + LDCL22 (i.e. L3) = Lsubstrate1 (i.e. L1). See id.
Regarding claims 18 and 22, UUCL 31 does not directly contact substrate 1. See id.
Regarding claim 25, L2 (i.e. LUCL21) is stated to be 50% of L1 (i.e. Lsubstrate1). See id. at, e.g., EMT par. 75.
Regarding claims 26-27, ‘057 discloses a 2.0 Pt loading in its UUCL 31, which is considered to be the entire Pt loading of UCL 21, as ULCL 32 comprises Rh rather than Pt. See id. at, e.g., EMT Overview; par. 59 and 94; Fig. 1.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 13 and 20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over ‘057 (incl. EMT). Regarding claim 13, while ‘057 does not employ a specific example comprising Pd in its UUCL 31 or DLCL 42, ‘057 does teach that its “outer Pt-carrying later [UUCL 31] may contain a noble metal such as Pd or Ir in addition to Pt” and that its “inner [DLCL 42] catalyst supporting layer of the downstream catalyst layer preferably contains Pt as a noble metal catalyst, and may further contain Pd or the like.” See ‘057 at, e.g., EMT Overview, par. 32, 44, and 94; Fig. 1. Given ‘057’s teaching of the appropriateness of employing Pd along with its UUCL 31’s Pt and DLCL 42’s Rh, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to do so- it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06.
The UUCL 31’s Pt loading is 0.05-10 g/L (‘057 at EMT par. 33) and its DLCL 42’s Pt loading is 0.05-2.0 g/L (id. at EMT par. 38), both ranges being preferable for balancing catalytic activity versus materials cost (id. at, e.g., EMT par. 33 and 38; i.e. ‘057 is considered to regard both concentration ranges as result-effective variables). Given ‘057’s regarding of its UUCL 31 and DLCL 42 Pt loadings (the obviousness of employing Pd in both of said layers being as detailed above) as result-effective variables, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ desired Pt (and, thus, Pd as well) UUCL 31 and DLCL 42 loadings -and thus comparative loading ratios thereof- such as within the claimed range, via routine experimentation- it has been held that “where 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.” See MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Regarding claim 20, UUCL 31 does not directly contact substrate 1. See ‘057 at, e.g., EMT Overview; par. 94; clms. 1-6; Fig. 1.
Potentially Allowable Subject Matter
Claims 11-12, 14, 16-17, 19, 21, and 23-24 would be allowable if rewritten to overcome the above rejections under 35 U.S.C. 112(b)/2nd par. and to include all of the limitations of the base claim and any intervening claims. Regarding said claims, all of which (save for claim 12) depending directly or indirectly from claim 11, it is noted that ‘057 (the most pertinent prior art of record) does not teach or suggest that its ULCL, UUCL, and DUCL ceria concentrations are all ≤70% of its DLCL’s ceria concentration (and that the DLCL comprises ceria), as claim 11 requires. As to claim 12, ‘057 does not teach or suggest ULCL and DLCL ceria contents within the claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ March 4, 2026
Primary Examiner
Art Unit 1736