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 .
Response to Election/Restrictions
1. Applicant’s election without traverse of Group I, claims 1-14 in the reply filed on 12/04/2025 is acknowledged.
*The requirement for restriction made in the last office action has been withdrawn and the nonelected claims 15-16 have been rejoined with the elected claims because the elected claims are now found allowable.
Status of Application
2. This application is a 371 of PCT/EP2021/085638, which was filed on 12/14/2021.
Claims 1-16 were originally presented in this application for examination.
Claims 1-16 are currently pending in this application and under consideration.
Specification
3. The examiner has not checked the specification to the extent necessary to determine the presence of all possible minor errors (grammatical, typographical, and idiomatic). Cooperation of the applicant(s) is requested in correcting any errors of which applicant(s) may become aware of in the specification, in the claims and in any further amendment(s) that applicant(s) may file.
Applicant(s) is also requested to complete the status of the copending applications referred to in the specification by their Attorney Docket Number or Application Serial Number, if any.
The status of the parent application(s) and/or any other application(s) cross-referenced to this application, if any, should be updated in a timely manner.
Claim Objections
4. Claims 1-15 are objected to because of the following informalities:
A. In claim 1, line 1, “Wall-flow filter” needs to be changed to --A wall-flow filter--.
B. In claims 2-14, “Wall-flow filter” should be changed to --The wall-flow filter--.
C. In claim 1, line 12, “characterized in that” should be changed to --wherein--.
D. In claim 2, line 1, “characterized in that” should be changed to --wherein the--.
E. In claim 3, line 1, “characterized in that” should be changed to --wherein the--.
F. In claim 4, line 2, “characterized in that” should be changed to --wherein the--.
G. In claim 5, line 2, “characterized in that” should be changed to --wherein the--.
H. In claim 6, line 1, “characterized in that” should be changed to --wherein the--.
I. In claim 7, line 2, “characterized in that” should be changed to --wherein the--.
J. In claim 8, line 2, “characterized in that” should be changed to --wherein the--.
K. In claim 9, line 2, “characterized in that” should be changed to --wherein the--.
L. In claim 10, line 2, “characterized in that” should be changed to --wherein--.
M. In claim 11, line 2, “characterized in that” should be changed to --wherein--.
N. In claim 12, line 2, “characterized in that” should be changed to --wherein--.
O. In claim 13, line 2, “characterized in that” should be changed to --wherein--.
P. In claim 14, line 1, “characterized in that” should be changed to --wherein the--.
Q. In claim 15, line 1, “Method” needs to be changed to --A method--.
R. In claim 15, line 2, “characterized in that” should be changed to --wherein--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 (Second Paragraph)
5. 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 15 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.
A. Claim 15 recites the limitation "the dry wall-flow filter substrate" in line 2. There is insufficient antecedent basis for this limitation in the claim.
B. It would appear that claim 15 is not positively reciting the process steps for the method being claimed. The claim should be amended clearly reciting the steps for carry out the method as recited in the claim.
Double Patenting
6. 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.
A. Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/256,407 (which is US 2024/0100478 A1) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The copending application teaches a wall-flow filter, which has the same structure as claimed. It is considered any additional limitations might be included in the independent claims of the copending application or in the instant application are inherent and they would have been included as part of the inventions since the products disclosed and claimed are the same. According to the MPEP, broader scope of invention embraces narrower scope of invention.
B. Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of Copending Application No. 18/256,412 (which is US 2024/0033687 A1) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The copending application teaches a wall-flow filter, which has the same structure as claimed. It is considered any additional limitations might be included in the independent claims of the copending application or in the instant application are inherent and they would have been included as part of the inventions since the products disclosed and claimed are the same. According to the MPEP, broader scope of invention embraces narrower scope of invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
7. Claims 1-16 are allowable over the prior art made of record and the claims will be allowed if the claim objections and rejections under a 35 USC 112(b) are overcome. The following is a statement of reason(s) for allowance of the claimed subject matter.
As concerned with claims 1-14, the prior art does not appear to disclose or fairly suggest a wall-flow filter comprising a wall-flow filter substrate of length L and coatings Z and F that differ from one another, wherein the wall-flow filter has a structure as defined in claim 1.
Foerster et al. (US 11,566,548 B2) is found to be the closest prior art, which teaches a similar wall-flow filter as recited in the instant claims, however this reference teaches that each of the coatings Y (which is located in the inlet) and Z (which is located in the outlet) contain one or more noble metals (see col. 18- col. 20, claims 1-12). This feature appears contrary to the claimed wall-flow filter where the claimed coating F (which is located in the inlet) does not require the noble metal.
There is no motivation to combine the teachings of the prior art references together to arrive to the claimed invention.
As concerned with claim 15, the prior art does not disclose a method for producing a wall-flow filter having the structure as recited in the instant claim 1.
As concerned with claim 16, the prior art does not disclose a method for reducing harmful exhaust gases of an internal combustion engine using a wall-flow filter having a structure as recited in the instant claim 1.
Citations
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All references are cited for related art. See PTO-892 Form prepared.
Conclusion
9. Claims 1-16 are pending. Claims 1-16 are rejected. No claims are allowed.
Contacts
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
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.
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/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
February 07, 2026