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 without traverse of Group II, claims 6-13 in the reply filed on August 6th, 2026 is acknowledged.
Claims 1-5 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 6th, 2026.
Claim Objections
Claims 7, 9, and 12 are objected to because of the following informalities:
In line 1 of claim 7, “A method of claim 6” should be edited to read, “The method of claim 6” for consistency with the rest of the dependent claims and to clearly indicate the claim dependence.
In line 2 of claim 9, “from” should be edited to read, “form”.
The instant Specification appears to use “silicon resin” and “silicone resin” interchangeably (see Specification, Page 9, Paragraph 1). Accordingly, “silicon resin” as recited in claim 12 should be edited to read “silicone resin” for consistency with the rest of the claims.
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.
Claims 6-13 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 6 recites the limitation "the resulting article" in line 6. There is insufficient antecedent basis for this limitation in the claim. For assessing the scope and meaning of the claim for prior art purposes, “the resulting article” will be interpreted to result after any of the previously recited steps, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claims 7-13 are indefinite due to their dependence on the indefinite claim 6 and because they do not cure the indefiniteness of “the resulting article” as it is recited therein.
Claims 11 and 13 recite the limitation "the silicone resin" in line 1 of each respective claim, and claim 12 recites the limitation “the silicon resin” in line 1. There is insufficient antecedent basis for these limitations in the claims. For assessing the scope and meaning of the claims for prior art purposes, any silicone resin will be interpreted to read on “the silicone resin” any silicon resin will be interpreted to read on “the silicon resin”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 7 recites the broad recitation “60-100% of the length of the article from the outlet end”, and the claim also recites “preferably from 65-95%, e.g. from 70-90% or 75-80% of the length of the article from the outlet end” which are the narrower statements of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. Any of the recited ranges will be interpreted to read on the claim.
Similarly, claim 13 recites the broad recitations “greater than 55%” and “less than 85%”, and the claim also recites “preferably greater than 60%, more preferably 65%” and “preferably less than 80%” which are the narrower statements of the ranges/limitations. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim. Any of the recited ranges will be interpreted to read on the claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Colombo (EP 4063003 A1, 2022).
Regarding claim 6, Colombo teaches a method of forming a coated monolith article (Colombo, [0071]), said method comprising:
providing a monolith article which has an inlet end and an outlet end (Colombo, [0071], wall-flow filter substrate of cordierite which has inlet and outlet channels),
applying an inorganic oxide coating to the inlet end (Colombo, [0071], “a cell density of 300 CPSI and a wall thickness of 8.5 mils was coated on its inlet channels with 28 g/I of a zeolite of the structure type CHA”),
calcining the inorganic coating (Colombo, [0071], “The wall-flow filter obtained according to a) above was heated with a heating rate of 150 K/h to 1100°C and kept at this temperature for 10h. This treatment caused the zeolite to sinter.”),
applying a washcoat coating to the outlet end (Colombo, [0071], “The wall-flow filter obtained according to b) above was coated on the surfaces of its outlet channels over 80% of its length starting from the outlet end with 61 g/I of a washcoat comprising 45g/ft3 of palladium and rhodium in a weight ratio of 7:2.”),
drying the resulting article (Colombo, [0071], “Subsequently, the filter was dried.”).
Regarding claim 7, Colombo teaches the method of claim 6, as discussed above, wherein the washcoat coating is applied such that it extends from 80% of the length of the article from the outlet end (Colombo, [0071], “The wall-flow filter obtained according to b) above was coated on the surfaces of its outlet channels over 80% of its length starting from the outlet end with 61 g/I of a washcoat comprising 45g/ft3 of palladium and rhodium in a weight ratio of 7:2.”).
Regarding claim 8, Colombo teaches the method of claim 6, as discussed above, wherein the washcoat loading is applied to the monolith article at the outlet end of the monolith article in a single dose or in multiple doses (Colombo, [0071], the washcoat loading is applied to the monolith article using a conventional wet coating process. Whether this process occurs in a single dose or in multiple doses, the claim is anticipated, there being no logical third option for number of doses).
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.
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 9-10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Colombo (EP 4063003 A1, 2022), as applied to claim 6 above, and further in view of Addiego (WO 2020/047503 A2).
Regarding claim 9, Colombo teaches the method of claim 6, as discussed above, wherein inorganic particles, which differ from the claimed mixture of inorganic particles and silicone resin, are sprayed as a dry particulate aerosol to form the inorganic oxide coating (Colombo, [0071], “The coating process used was a dry coating process using air as gas for producing the powder-gas-aerosol and for introducing it into the inlet channels of the wall-flow filter substrate.”). While Colombo does not teach that silicone resin is included in the inorganic particle aerosol, Addiego teaches a silicone resin (Addiego, [00434], Dowsil 2405 (Dimethyl siloxane w/ Me Silsesquioxanes & n-Octyl Silsesquioxanes, Methoxy-term)) included as a binder in a dry aerosol coating of inorganic material applied to a monolith filter wall (Addiego, [00435], [00464]). Addiego further teaches that zeolites are suitable inorganic materials with which to mix the binder to form the coating (Addiego, Claims 15 and 39, coating comprises material of the second composition, and zeolites are listed as materials for the material of the second composition).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified Colombo’s method by including Colombo’s silicone resin in a mixture with the inorganic particles (Colombo, [0071], CHA zeolite). Addiego teaches that including such a binder in an inorganic oxide aerosol to coat a monolith filter inlet (Addiego, [00437]) improves filtration efficiency (Addiego, [00267]). A person having ordinary skill in the art would have been motivated to realize this advantage in Colombo’s coating method and would have had a reasonable expectation of success in doing so, as Addiego teaches that zeolites, which Colombo uses as the inorganic particles, are taught by Addiego to be amenable to this effect (Addiego, Claims 15 and 39, coating comprises material of the second composition, and zeolites are listed as materials for the material of the second composition).
Regarding claim 10, Colombo teaches the method of claim 6, as discussed above, wherein the inorganic particles comprise CHA aluminosilicate zeolite (Colombo, [0071]). Further, it would have been obvious to include Addiego’s silicone resin in the inorganic oxide coating, as discussed above with respect to claim 9.
Regarding claim 13, Colombo teaches the method of claim 6, as discussed above. Further, it would have been obvious to include Addiego’s silicone resin in the inorganic oxide coating, as discussed above with respect to claim 9. Finally, while neither Colombo nor Addiego explicitly teach a degree of crosslinking of the silicone resin, it would necessarily fall within “greater than 55%” or “less than 85%”, as these two ranges cover all possible degrees of crosslinking from 0 to 100%.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Colombo (EP 4063003 A1, 2022), as applied to claim 6 above, further in view of Addiego (WO 2020/047503 A2), and further evidenced by Dow (“Silicone resins and intermediates – Selection guide”, 2019).
Regarding claim 11, Colombo teaches the method of claim 6, as discussed above. While Colombo does not teach that a silicone resin is included in the method, Addiego teaches a silicone resin (Addiego, [00434], Dowsil 2405 (Dimethyl siloxane w/ Me Silsesquioxanes & n-Octyl Silsesquioxanes, Methoxy-term)) included as a binder in a dry aerosol coating of inorganic material applied to a monolith filter wall (Addiego, [00435], [00464]). Addiego further teaches that zeolites are suitable inorganic materials with which to mix the binder to form the coating (Addiego, Claims 15 and 39, coating comprises material of the second composition, and zeolites are listed as materials for the material of the second composition).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified Colombo’s method by including Colombo’s silicone resin in a mixture with the inorganic particles (Colombo, [0071], CHA zeolite). Addiego teaches that including such a binder in an inorganic oxide aerosol to coat a monolith filter inlet (Addiego, [00437]) improves filtration efficiency (Addiego, [00267]). A person having ordinary skill in the art would have been motivated to realize this advantage in Colombo’s coating method and would have had a reasonable expectation of success in doing so, as Addiego teaches that zeolites, which Colombo uses as the inorganic particles, are taught by Addiego to be amenable to this effect (Addiego, Claims 15 and 39, coating comprises material of the second composition, and zeolites are listed as materials for the material of the second composition).
While neither Colombo nor Addiego teach that the silicone resin has a molecular weight of greater than 1,000, the resin of modified Colombo (Addiego, [00434], Dowsil 2405) has a molecular weight of 4,000, as shown in the manufacturer’s brochure (Dow, Page 9, Table 4, DOWSILTM 2405 Resin, Molecular weight).
Regarding claim 12, Colombo teaches the method of claim 6, as discussed above. While Colombo does not teach that a silicon resin is included in the method, it would have been obvious to include Addiego’s silicon resin for reasons discussed with respect to claim 11 above. As discussed in the Claim Objections section, “silicon resin” as recited in claim 12 is used interchangeably with “silicone resin”.
While neither Colombo nor Addiego explicitly teach that the silicon resin has the formula [RxSiXyOz]n, wherein R is an alkyl or aryl, X is a functional group bonded to silicon and z is more than 1 and less than 2, and y is less than 1, the manufacturer’s brochure clarifies that the resin of modified Colombo (Addiego, [00434], Dowsil 2405) has a formula of (Me1.05SiO1.475)n (Dow, Page 3, lattice with (R-SiO3/2) structure; Page 9, Table 4, DOWSILTM 2405 Resin has “All Methyl” substituents and a degree of substitution of 1.05. To fulfill the valence of silicon, x + 2z = 4, as explained on Page 9, Paragraph 4 of the instant Specification, giving z = 1.475), which fulfills the claimed formula, where R is methyl, y is 0, and z is 1.475.
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 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 and 14 of copending Application No. 18/495,782 (reference application, referred to henceforth as “’782”). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding instant claim 6, claims 9 and 14 of ‘782 claim a method of forming a coated monolith article, said method comprising:
providing a monolith article which has an inlet end and an outlet end (‘782, claim 9, step v)),
applying an inorganic oxide coating to the inlet end (‘782, claim 9, step viii)),
optionally drying and/or calcining the inorganic coating (‘782, claim 14, step v)),
applying a washcoat coating to the outlet end (‘782, claim 9, step vi)),
optionally drying and/or calcining the resulting article (‘782, claim 9, step vii)).
Regarding instant claim 7, ‘782 claims the method of instant claim 6, as discussed above, wherein the washcoat coating is applied such that it extends from 50-90% of the length of the article from the outlet end (‘782, claim 9, step vi)), which overlaps with the claimed range of from 60-100% of the length of the article from the outlet end.
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 length of the washcoat coating extending from the outlet end because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding instant claim 8, ‘782 claims the method of instant claim 6, as discussed above, wherein the washcoat loading is applied to the monolith article at the outlet end of the monolith article in a single dose or in multiple doses (‘782, claim 10).
Regarding instant claim 9, ‘782 claims the method of instant claim 6, as discussed above, wherein a mixture of inorganic particles and silicone resin is sprayed as a dry particulate aerosol to form the inorganic oxide coating (‘782, claim 12)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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