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 .
This application is in response to a RCE filed on 05/07/2026
Claims 1, 5, 8, 10-12, 14, 17-18, 20, 22, 24-26 and 49 are presently pending in this application. Applicant has amended claim 1, cancelled claims 2-4, 6-7, 9, 13, 15-16, 19, 21, 23, 27-48, 50-67 and claims 26, 49 are withdrawn as non-elected Group. Claims 1, 5, 8, 10-12, 14, 17-18, 20, 22, 24-25 are under examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/07/2026 has been entered.
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 8, 22, 24 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 8 recites “the yttrium” is present in an amount upto about 99% by weight is not clear as claim 8 is dependent on claim 1 wherein claim 1 recites a first oxide being an oxide of yttrium wherein the first oxide is present in amount by weight from about 10 to about 20%. Range of upto 99% by weight which is broader, and range can not be broader from narrower range and also it’s not clear if yttrium is referred to as refractory metal oxide support material or a first oxide. Clarification is requested. For examining purpose, examiner has interpreted “yttrium” present as a first oxide of yttrium.
Claim 22 recites “first oxide is supported on first refractory metal oxide support material in amount of about 1 to about 40 wt.% which is not clear as claim 22 dependent on claim 14 and claim 14 dependent on claim 1 wherein claim 1 recites a first oxide being an oxide of yttrium wherein the first oxide is present in amount by weight from about 10 to about 20%. Range of 1 to about 40 wt.% is broader and range cannot be broader from narrower range. Clarification is requested. For examining purpose, examiner has interpreted “first oxide is supported….from about 10% to about 20%...”.
Regarding dependent claim 24 this claim does not remedy the deficiencies of parent claim 22 noted above and are rejected for the same rationale.
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.
Claims 1, 5, 8, 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hallstrom et al (WO 2019/092636 A1).
Regarding claims 1, 5, Hallstrom discloses an oxidation catalyst composition comprising a platinum group metal (i.e., platinum palladium rhodium rhenium osmium ruthenium, page 2, pages 11-12), rare earth element (reads on a first oxide of yttrium) in amount of about 0.1 to about 10 wt.%(page 3, pages 11-12, overlaps claimed ranges of 10-20 wt.%) supported on a support material comprising a first refractory metal oxide support material wherein first refractory metal oxide support material comprising of ceria, alumina, silica, titania, zirconia, silica-alumina, alumina-zirconia, alumina-titania, ceria-zirconia, alumina-ceria-zirconia, lanthana-alumina, lanthana-zirconia, lanthana-zirconia-alumina, baria-alumina, baria-alumina-lanthana, alumina-ceria in amount of 0.5 to about 50 wt.% (page 15, reads on claims 1 and 5). See MPEP 2131.03. 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 8, Hallstrom discloses first oxide (i.e., rare earth metal oxide comprising of yttrium oxide) in amount of 0.1 to about 10 wt.% and/or 0.5 to about 50 wt.% of refractory metal oxide comprising yttrium oxide (pages 11-12, 15). 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 10, Hallstrom discloses palladium and platinum loaded on first refractory metal oxide support material in amount of 0.1 to 10 wt.% based on a weight of the first refractory metal oxide support and wherein at least one of platinum or palladium is present in amount of at least about 0.1 wt.% or greater (see page 12). 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 11, Hallstrom discloses combination of platinum and palladium (page 12).
Regarding claim 12, Hallstrom does not explicitly discloses or suggest the ratio of platinum to palladium is from 1:20 to 20:1 but discloses amount of PGM (includes platinum and palladium) present from 0.1 to 10 wt.%, therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to choose the instantly claimed weight ratio, which includes the ratio of palladium to platinum by weight is from 100 to about 0.01 (i.e., PGM component), through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). 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 14, 17-18, 20, 22, 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Hallstrom et al (WO 2019/092636 A1) in view of Chiffey et al (US PGPUB No.: 20150202600 A1, IDS cited reference by applicant).
Regarding claims 14, 22, Hallstrom discloses the oxidation catalyst as disclosed above in claim 1 where oxidation catalyst composition comprising of PGM component supported on first refractory metal oxide support material and a first oxide comprising of rare earth metal oxide added to the refractory metal oxide in amount of about 0.1 to about 10.0 wt.% and wherein refractory metal oxide support material amount is about 0.5-50 wt.% (pages 11-12, 15, reads on claim 14 and 22 limitation). Hallstrom further discloses catalytic material components of the catalyzed soot filter comprising oxidation catalyst composition and a second SCR material mixed in same washcoat and disposed on the substrate in a layered configuration (page 20) but does not explicitly disclose or suggest further comprising of second refractory oxide support material and wherein the second refractory metal oxide support material optionally comprises alumina, silica, zirconia, titania, ceria, silica-doped alumina, silica-titania, silica-zirconia, yttrium-zirconium, manganese-zirconium, tungsten-titania, zirconia-titania, zirconia-ceria, zirconia-alumina, manganese-alumina, lanthanum-zirconia, lanthanum-zirconia-alumina, magnesium-alumina oxide, or a combination thereof and the second refractory metal oxide support material optionally comprises a base metal oxide chosen from oxides of cerium, iron, cobalt, zinc, chromium, molybdenum, nickel, tungsten, copper, magnesium, antimony, tin, lead, yttrium, and combinations thereof.
However, Chiffey discloses oxidation catalyst for treating an exhaust gas from a diesel engine comprising of first washcoat region comprising first platinum group metal (PGM), a first support material comprising of refractory oxide material, NOx storage component, a second washcoat region comprising of platinum (i.e., reads on PGM component), manganese and a second support material comprising of second refractory metal oxide support material (abstract, paragraphs 0041-0045, 0054-0057, 0078, 0095-0098) where the second support material comprising of alumina, silica, titania, zirconia, ceria and a mixed composite oxide thereof such as silica-alumina, titania-alumina, zirconia-alumina, ceria-alumina, titania-silica, zirconia-titania, ceria-zirconia, and alumina-magnesium oxide (paragraphs 0107-0108, reads on clams 14, 22 limitation).
Given Hallstrom and Chiffey both teach oxidation catalyst for treatment of gaseous emissions, therefore, it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of Hallstrom with Chiffey to include the second refractory metal oxide support material of Chiffey which provides excellent activity toward the oxidation of NO in an exhaust gas from diesel engine as taught by Chiffey (paragraph 0007).
Regarding claim 17, Chiffey discloses the oxidation catalyst as disclosed above in claim 14 where oxidation catalyst composition comprising of PGM component (i.e., platinum) supported on a second refractory metal oxide support material in amount from 5 to 300 g/ft3 (paragraph 0098-0099) but does not disclose the platinum (i.e., PGM component) supported on second refractory metal oxide support in an amount by weight from about 0.1% to about 10%, based on the weight of the second refractory metal oxide support material.
However, Chiffey discloses total load of PGM (platinum), by weight, from 5 to 300 g/ft3 and further discloses weight ratio of manganese to platinum of 5:1 to 0.2:1 (paragraphs 0098-0099, 0103-0106), therefore it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to choose the instantly claimed ranges, which includes the range of 0.1 wt.% to 10 wt.% of Pt (i.e., PGM component), through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). 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 18, Chiffey discloses second refractory metal oxide support material comprises alumina or zirconia (see paragraph 107).
Regarding claim 20, Hallstrom in view of Chiffey discloses first oxide is supported on the first refractory oxide (see Hallstrom-pages 11-12, 15) and PGM component is supported on the second refractory metal oxide support material (see Chiffey-paragraphs 0094).
Regarding claim 24, Hallstrom discloses first refractory metal oxide support material comprising of ceria in an amount from 0.5 to about 50 wt.% (page 15). 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 25, Chiffey does not disclose copper therefore oxidation catalyst composition taught Chiffey is substantially free of copper (see the whole document of Chiffey).
Response to Arguments
Applicant’s arguments, see applicant remarks on pages 2-3, filed on 04/10/2026 with respect to the rejection of Claims 1, 3, 5, 8 and 11 under 35 U.S.C. 102 over Dang (US PGPUB No.: 2011/0044874 A1), rejection of Claims 1, 5, 11, 12, 14, 18, 20, 22, 25 under 35 U.S.C. 102 over Chiffey (US PGPUB No.: 2015/0202600 A1), rejection of claims 10, 12 over Dang, rejection of claims 14, 17-18, 20, 22, 24,25 under 35 U.S.C. 103 over Dang in view of Chiffey and rejection of claims 3,8,10,17,24 under 35 U.S.C. 103 over of Chiffey in view of Dang have been fully considered and are persuasive. Therefore the rejections have been withdrawn.
However, upon further consideration, a new ground of rejection is made under 35 U.S.C. 103 over Hallstrom et al (WO2019/092636 A1) for claims 1, 5, 8, 10-12 and Hallstrom in view of Chiffey (US PGPUB No.: 2015/0202600 A1) for claims 14, 17-18, 20, 22, 24-25 as set forth above.
Applicant mainly argues that Chiffey does not disclose first oxide present in an amount by weight of about 10% to about 20% of yttrium which was amended in claim 1 after final rejection sent on 12/12/2025.
However, examiner has added new reference taught by Hallstrom which teaches oxidation catalyst comprising PGM, rare earth (i.e., first oxide) present in amount of about 0.1 to about 10 wt.% (see page 12) which overlaps claimed range of about 10wt% to 20 wt.% as set forth above in the rejection. 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). See also MPEP 2131.03.
Therefore the applicant’s arguments is moot in view of new ground of rejection set forth above.
Further, amendment to the claims necessitated new 112(b) rejections of record.
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 08/08/2026
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