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 .
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.
Claim(s) 1-16, and 19-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foerster WO 2020/094760, citations are made to English language equivalent US 2021/0396167.
Regarding claim 1 and 20-21, Foerster teaches a:
“[w]all-flow filter for removing particles from the exhaust gas of internal combustion engines, which comprises a wall-flow filter of length L and at least one catalytically active coating Y and/or Z, wherein the wall-flow filter comprises channels E and A, which extend in parallel between a first and a second end of the wall-flow filter and are separated by porous walls, which form surfaces OE and OA, respectively, and wherein the channels E are closed at the second end and the channels A are closed at the first end, the coating Y is located in the channels E on the walls of the surfaces OE, wherein the coating on the walls of the surface OE extends from the first end of the wall-flow filter to a length of less than the length L, the coating Z is located in the channels A on the walls of the surfaces OA, wherein the coating on the walls of the surface OA extends from the second end of the wall-flow filter to a length of less than the length L” (Claim 1).
The coating Z may include palladium or rhodium (Paragraph [0021]) and a cerium/zirconium oxide mixture (Paragraph [0024]).
The coating Y of Foerster corresponds to the coating F of the instant claims (Fig. 2). The layer Y of Forester may consist of highly porous aluminum oxide, which is a coherent layer of a ceramic membrane without a noble metal (Examples 1-4).
Foerster does not expressly state the thickness of coating Y. However, the concentration of the aluminum oxide on the substrate may be, for example, 10 g/L (Example 4). This concentration is within the range of concentrations of for coating F described in the instant specification, which states that the concentration may be 5 to 130 g/L (Instant Specification, Paragraph [0039]). Thus, the layer formed in Forester would inherently have a thickness within the range of 1 to 150 microns because the layer has the same mass content and is made of materials substantially similar to the claimed invention.
Regarding claim 2, the coating Z may extend 90 to 50 % of the length L (Paragraph [0026]) from the second end (Fig. 2).
Regarding claim 3, the coating Z may extend up to 100% of the length L (Paragraph [0019]).
Regarding claim 4, coating Z may include a combination of palladium and rhodium (Paragraph [0021]).
Regarding claim 5, coating Z may include a combination of palladium or rhodium without platinum (Paragraph [0021]).
Regarding claims 6-9, Foerster teaches:
“the coatings X and Y along with Z (if present) comprise lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and an oxygen storage component comprising zirconium oxide, cerium oxide, yttrium oxide and lanthanum oxide. In other embodiments of the present invention, the coatings X and Y along with Z (if present) comprise lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and an oxygen storage component comprising zirconium oxide, cerium oxide, praseodymium oxide and lanthanum oxide.” (Paragraph [0026]).
Regarding claim 10 and 11, layer Y, which corresponds to layer F in the instant invention may be made of aluminum oxide (Examples).
Regarding claim 12, Foerster teaches in Example 3 that the concentration of Z is 100 g/L and the concentration of Y, which relates to instantly claimed F is 10 g/L, which equates to a ratio of 10 (Example 3).
Regarding claim 13, Foerster does not expressly state the ratio of substrate thickness to layer thickness of Y. However, the concentration of the aluminum oxide on the substrate may be, for example, 10 g/L (Example 4). This concentration is within the range of concentrations of for coating F described in the instant specification, which states that the concentration may be 5 to 130 g/L (Instant Specification, Paragraph [0039]). Thus, the layer formed in Forester would inherently have a ratio of substrate thickness to layer thickness of Y within the range recited in instant claim 13. Also, the proportions shown in the Figure 2 of Foerster are within the claimed ratio (Fig. 2).
Regarding claim 14, Foerster teaches that the filter may also have a coating X, which would correspond to the claimed coating Y (Figure 6). Coating X is placed on channel OE (Figure 6) and may be different from layer Z and Y. Coating X may include platinum (Paragraph [0021]) and may include a carrier other than cerium/zirconium mixed oxide (Paragraph [0023]).
Regarding claim 15, coating X, which corresponds to instantly claimed coating Y, may extend between 50% and 100% of length L (Figure 6).
Regarding claim 16, Foerster teaches the coating Z and Y, which corresponds to the instantly claimed coating F, may extend up to 100% of the length L (Paragraph [0019]). Coating Z may include lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and an oxygen storage component comprising zirconium oxide, cerium oxide, yttrium oxide and lanthanum oxide (Paragraph [0026]).
Foerster does not expressly state the thickness of coating Y. However, the concentration of the aluminum oxide on the substrate may be, for example, 10 g/L (Example 4). This concentration is within the range of concentrations of for coating F described in the instant specification, which states that the concentration may be 5 to 130 g/L (Instant Specification, Paragraph [0039]). Thus, the layer formed in Forester would inherently have a thickness within the range of 1 to 150 microns because the layer has the same mass content and is made of materials substantially similar to the claimed invention.
Regarding claim 19, Foerster teaches the length of Y in channel e may be 50 to 100 % (Fig. 6).
Forester does not expressly state the pore volume ratios recited in claim 19. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
Applicant argues that the Foerster reference requires that the layer Y, which corresponds to instantly claimed layer F requires a precious metal, which falls outside the scope of the claim. In response, the precious metals are the catalytically active metals and the Foerster expressly states that the article includes “at least one catalytically active coating Y and/or Z” (Claim 1 and Paragraph [0014]). Thus, the scope of the Foerster clearly in includes embodiments wherein the Z is active and Y is not catalytically active. If Y is catalytically active is cannot contain precious metals.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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, Amber Orlando can be reached at (571) 270-3149. 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.
/JAMES A FIORITO/Primary Examiner, Art Unit 1731
Prosecution Insights