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 .
Election/Restrictions
Applicant’s election of Group II, claims 29-31, in the reply filed on 31 July 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The requirement is still deemed proper and is therefore made FINAL.
Claims 16-28 and 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without indicating traverse in the reply filed on 31 July 2026.
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 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US 2012/0186240 – previously cited).
Considering claim 29, Tanaka teaches an exhaust gas purifying filter (abstract) comprising a cylindrical porous ceramic having a plurality of micropores (Paragraph 29) where a porous film of ceramic particles is formed on the surface of the inflow cells such that it does not penetrate too much into the micropore so that the pores communicate (Paragraph 39; Fig.3) (e.g. the porous substrate comprises unfilled pores closed by the porous film). The ceramic particles that make up the porous film optionally comprises carbides of Ti, Zr, Si, etc. (e.g. refractory materials) (Paragraphs 35-36). Further, the grains of the porous film are depicted as spherical (Fig.3) (i.e. isometric grains).
While not expressly teaching a singular example of the claimed coated substrate this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Tanaka as this is considered a combination of a conventionally substrate and porous coating of conventionally known materials which form exhaust gas purifying filters and one would have had a reasonable expectation of success.
Considering claim 30, Tanaka teaches where it is preferable that the thickness of the porous film is 5-60 µm (Paragraph 53) overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 31, the recitation of “prepared by a method…” is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed coated substrate. See MPEP 2113. Tanaka meets the claimed limitation in that Tanaka teaches where the porous film on the substrate is formed by a wet method (Paragraph 81) using water to disperse (Paragraph 82) and optionally containing a polymer of polyvinyl alcohol, etc. (Paragraph 89) and the porous substrate is then coated (Paragraph 98), dried (Paragraph 100), and heat treated at 900-2000 °C (Paragraph 103) and teaches a substantially identical structure as that which is claimed as outlined above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kasuga et al. (US 2015/0068176) and Song et al. (US 2018/0169588) teach porous substrates coated with particles similar to that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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