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 .
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (see instant Specification, [0031], [0069]). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 1-14 are objected to because of the following informalities:
Independent claims 1 and 14 should be edited to begin with the indefinite article “A”.
Dependent claims 2-13 should be edited to begin with the indefinite article “The”.
Appropriate correction is 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.
Claim 14 is 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 14 recites the limitation "the dry wall-flow filter substrate" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is therefore unclear whether “the dry wall-flow filter substrate” must be the same substrate as “a wall-flow filter substrate” as recited in claim 1.
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.
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.
Claims 1-10 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Foerster (U.S. 2021/0396167 A1, claiming priority to DE 102018127955.8, filed November 8th, 2018) in view of Klingmann (U.S. 2010/0275579 A1).
Regarding claim 1, Foerster teaches a wall-flow filter for removing particles from the exhaust gas of combustion engines (Foerster, Fig. 2, [0001]), comprising a wall-flow filter substrate of length L and coatings Z and F that differ from one another (Foerster, Fig. 2, [0069]-[0071], coating F is represented as region P and differs from coating Z),
wherein the wall-flow filter substrate has channels E and A (Foerster, Fig. 2, [0014]), which extend in parallel between a first and a second end of the wall-flow filter substrate, are separated by porous walls and form surfaces OE and OA respectively (Foerster, Fig. 2, [0014]), and wherein the channels E are closed at the second end and the channels A are closed at the first end (Foerster, Fig. 2, [0014]), and
wherein the coating Z is located in the porous walls and/or on the surfaces OA, but not on the surfaces OE (Foerster, Fig. 2, Claim 1, Z is on OA, and Y is on OE) and comprises palladium and/or rhodium and a cerium/zirconium mixed oxide (Foerster, [0026]),
and that the coating F is located in the porous walls and/or on the surfaces OE, but not on the surfaces OA, and comprises a particulate metal compound and no noble metal (Foerster, Fig. 2, [0043], [0105], claim 10, powder gas aerosol is selected from a list of oxides and is impinged in the inlet region),
characterized in that
the wall-flow filter substrate has a coating Y which is different from the coating F, which is located in the porous walls and/or on the surfaces OE, but not on the surfaces OA (Foerster, Fig. 2, Claim 1, Y is on OE, and Z is on OA).
Foerster does not explicitly teach that the coating Y comprises platinum, palladium or platinum and palladium which contains no rhodium and no cerium/zirconium mixed oxide. However, in Foerster’ wall-flow filter, surface channel E on which Y lies constitutes the inlet region (Foerster, [0014]). In an analogous wall-flow filter, Klingmann teaches that the coating in the inlet region advantageously comprises palladium (Klingmann, [0030], “This layer should be arranged such that it is in direct contact with the incoming, i.e. particulate-rich, exhaust gas.”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have had the coating Y of Foerster’s filter comprise palladium as the catalytically active component. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, both Foerster (Foerster, [0026]) and Klingmann (Klingmann, [0030], [0035]) teach that palladium is suitable for this exact purpose.
Regarding the exclusion of rhodium from coating Y, Klingmann teaches that it is preferable to separate rhodium from the palladium because spatial proximity of the two can lead to the formation of relatively catalytically inactive alloys at high temperatures (Klingmann, [0027]). It would therefore be obvious for layer Y, which contains palladium, to not also contain rhodium.
Regarding the exclusion of cerium/zirconium mixed oxide from coating Y, Klingmann teaches that it is preferable for the coating in the input region not contain this material (Klingmann, [0015], “In order not to hinder permanent soot burnoff by oxygen storage effects,
which are entirely desirable in the conversion of HC and CO in slightly rich operating phases, a preferred configuration of the invention is therefore that when the first layer contacted directly by the incoming exhaust gas does not comprise any oxygen-storing cerium/zirconium mixed oxide.”). Because it would be reasonable for oxygen storage effects to also be relevant in the input region of Foerster’s wall-flow filter, it would be obvious to exclude cerium/zirconium mixed oxide from coating Y.
Foerster does not explicitly teach that coating Y differs from coating Z. However, by the same considerations discussed above with respect to coating Y excluding cerium/zirconium mixed oxide and rhodium by virtue of coating Y being in the inlet region, it would be obvious for coating Z located in the output region to differ from coating Y, as such considerations would not also apply to the output region.
Regarding claim 2, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating Z is located on the surfaces OA of the wall-flow filter substrate (Foerster, [0014]) and extends from the first end of the wall-flow filter substrate to 60 to 80% of the length L (Foerster, [0017]).
Regarding claim 3, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating Z is located in the porous walls of the wall-flow filter substrate (Foerster, Fig. 5, [0028], in-wall, where instantly claimed coating Z corresponds to coating X in Foerster) and extends from the first end of the wall-flow filter substrate to 80% or lower of the length L (Foerster, [0019]), which overlaps with the claimed range of 50 to 100% of the length L.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the proportion of length of coating Z to length L because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 4, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating Z contains palladium and rhodium (Foerster, [0022], palladium and rhodium are particularly preferred).
Regarding claim 5, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above. Foerster teaches that palladium and rhodium are particularly preferred (Foerster, [0022]), and Klingmann teaches that that it is preferable to separate rhodium from the palladium because spatial proximity of the two can lead to the formation of relatively catalytically inactive alloys at high temperatures (Klingmann, [0027]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention for coating Z not to contain platinum by combining the above teachings of Foerster and Klingmann. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). In the instant case, excluding platinum from coating Z of Foerster’s wall-flow filter would predictably improve it by utilizing the particularly preferred combination of palladium and rhodium taught by Foerster (Foerster, [0022]) while avoiding the formation of relatively catalytically inactive alloys that would be liable to form if rhodium and platinum were placed in close proximity to one another (Klingmann, [0027]).
Regarding claim 6, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that the cerium/zirconium mixed oxide of coating Z contains one or more rare earth metal oxides (Foerster, [0024]-[0025]).
Regarding claim 7, modified Foerster renders the wall-flow filter according to claim 6 obvious, as discussed above, characterized in that the rare earth metal oxide is lanthanum oxide, yttrium oxide, praseodymium oxide, neodymium oxide and/or samarium oxide (Foerster, [0024]-[0025]).
Regarding claim 8, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating Z comprises lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and a cerium/zirconium/rare earth metal mixed oxide containing yttrium oxide and lanthanum oxide as rare earth metal oxides (Foerster, [0025]-[0026]).
Regarding claim 9, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating Z comprises lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and a cerium/zirconium/rare earth metal mixed oxide containing praseodymium oxide and lanthanum oxide as rare earth metal oxides (Foerster, [0025]-[0026]).
Regarding claim 10, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating F consists of one or more particulate metal compounds (Foerster, [0032], claim 10, powder).
Regarding claim 11, modified Foerster renders the wall-flow filter according to claim 10 obvious, as discussed above, characterized in that coating F is cerium oxide, titanium dioxide, zirconium dioxide, silicon dioxide, aluminum oxide, or mixtures or mixed oxides thereof (Foerster, [0032], claim 10).
Regarding claim 13, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, characterized in that coating Y extends over a length of 60 to 80% of the length L (Foerster, [0017]).
Regarding claim 14, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above. In addition, Foerster teaches impinging the channels E, which are already coated with coatings Z and Y, by a dry powder/gas aerosol, wherein the powder contains a particulate metal compound (Foerster, [0014], [0017]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have impinged the channels E, which are already coated with coatings Z and Y, by a dry powder/gas aerosol, wherein the powder contains a particulate metal compound. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.B.). In the instant case, performing the claimed step would yield the predictable effect of producing the wall-flow filter rendered obvious by modified Foerster discussed above for claim 1.
Regarding claim 15, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above. In addition, Foerster teaches a method of reducing harmful exhaust gases of an internal combustion engine, comprising passing the harmful exhaust gases of the internal combustion engine through the disclosed wall-flow filter (Foerster, [0058], Claim 17).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have implemented a method of reducing harmful exhaust gases of an internal combustion engine, comprising passing the harmful exhaust gases of the internal combustion engine through the wall-flow filter rendered obvious by modified Foerster as contemplated for claim 1 above. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.B.). In the instant case, performing the claimed step would yield the predictable effect of realizing the advantages of the wall-flow filter rendered obvious by modified Foerster discussed above for claim 1.
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 1-10 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12-16 of copending Application No. 18/256,398 (“’398”, reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of ‘398 together overlap in scope with the limitations of instant claims 1-10 and 12-15. The only substantive difference between claims 1-8 and 12-16 of ‘398 and 1-10 and 12-15 of the instant application is that the coating F of ‘398 comprises “a mineral material”, whereas the coating F of the instant claims comprises “a particulate metal compound”. As mineral materials have a great degree of overlap with metal compounds (IFIS, “Minerals”, 2009), and the coating material F of ‘398 would necessarily be a “particulate” to achieve an aerosol as claimed in claim 15 in ‘398, “a mineral material” in ‘398 does not patentably distinguish the claims from “a particulate metal compound” of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Foerster (U.S. 2021/0396167 A1, claiming priority to DE 102018127955.8, filed November 8th, 2018), Klingmann (U.S. 2010/0275579 A1), Goffe (U.S. 9,764,287), and Swallow (U.S. 2013/0149220 A1) are considered to be the closest prior art to the instant claims.
Regarding claim 12, modified Foerster renders the wall-flow filter according to claim 1 obvious, as discussed above, but none of the cited prior art references teach or suggest an increasing concentration gradient of the coating F in the longitudinal direction of the filter from its first to its second end. Foerster does teach thickness gradients of coatings Y and Z, where the thickness of each is greatest at their respective ends (Foerster, Fig. 3, [0018]), where these gradients make it possible to adjust filtration efficiency over the entire length L of the filter, resulting in more uniform deposition of the soot over the entire filter wall and thus an improved exhaust-gas back pressure increase (Foerster, [0018]). However, Foerster and the other cited prior art references are silent to a concentration gradient of the coating F in the longitudinal direction, and applying the teachings with respect to coatings Y and Z to the separate coating F would not yield a predictable effect. It would therefore not be obvious to implement such a concentration gradient of coating F.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736