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 .
This application is in response to preliminary amendment filed on 03/07/2024.
Claims 1-20 are pending. Applicant has amended claims 3-6, 8, 11-13 and added new claims 14-20. Applicant has orally elected Group II, claims 2, 7-9 and 17-20.
Election/Restriction
4. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1, 3-6, 10-12, 14-16 drawn to an exhaust gas treatment system, classified in F01N3/2066.
II. Claims 2, 7-9, 17-20, drawn to an SCR catalyst article, classified in B01J29/68.
III. Claim 13, drawn to method of treating an exhaust gas, classified in B01J37/0246.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another and materially different apparatus (MPEP § 806.05(g)). In this case Invention I requires an exhaust gas treatment system comprising first catalytic article comprising a first catalyst composition and a second catalytic article downstream of the first catalyst article comprising second catalyst composition which is not required by Invention II while Invention II requires an SCR catalyst article comprising substrate having thereon a second catalyst composition downstream of the first catalyst composition which is not required by invention I.
Inventions I and III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case process can be practiced with different apparatus such as flue gas system or off gas system other than exhaust gas treatment system (see US PGPUB No.: 20190275504).
Inventions II and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the composition as claimed has utility for materially different processes such as denitrogenation, desulfurization, dewaxing and reforming.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
• the inventions have acquired a separate status in the art in view of their different classification, and/or
• the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and/or
• the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
5. A telephone call was made to Mr. David Hoffman on 07/03/2026 to request an oral election to the above restriction requirement and applicant has elected Group II, Claims 2, 7-9, 17-20 without traverse. Group I and III claims will be withdrawn.
Applicant(s) are advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application. Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
6. Claim 17 is objected to because of the following informalities:
It is suggested to amend “the first catalyst” to “the SCR catalyst” to provide clarity in the claim 17 line 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 2, 7-9 and 17-20 are rejected under 35 U.S.C. 103 as obvious Yang et al (US PGPUB No.: 20190168199 A1, IDS cited reference by applicant),
Regarding Claims 2, 17 and 19, Yang discloses an SCR catalyst article comprised zoned coatings where first zone comprising first coating layer comprising iron containing molecular sieve and a second coating layer containing copper containing molecular sieve wherein second zone is downstream of the first zone and wherein first and second molecular sieve each having silica to alumina ratio (SAR) of from 1 to about 50 (abstract, paragraph 0059, reads on claims 1 and 19) and molecular sieve each having independently zeolite structure (see claims 5, 17-19). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In addition, Yang discloses that SCR catalyst article comprised zoned coatings and coating layers that are interchangeable (paragraphs 0145). Further Yang discloses Cu/CHA as SCR catalyst (paragraph 0140) and Fe and Cu can have small pore molecular sieve (paragraph 0055, 0060, 0085, 0032).
Yang does not disclose SCR catalyst article where first catalyst composition is an SCR catalyst (i.e., Cu/CHA) and second catalyst composition an Fe-load molecular sieve.
However since Yang discloses that SCR catalyst article where coating layers as disclosed above can be interchangeable (see abstract, paragraphs 0145, 0150-0153 therefore, it would be obvious that SCR catalyst article can have first catalyst composition (i.e., first coating layer) having copper loaded small pore molecular sieve (reads on SCR catalyst, i.e., Cu/CHA, reads on claims 1, 17) and second catalyst composition (i.e., second coating layer) having iron loaded small pore molecular sieve.
Regarding claim 7, Yang discloses SCR catalyst article is flow through monolith or a wall flow filter (paragraphs 0022, 0094).
Regarding claim 8, Yang discloses wherein the first catalyst composition is present in the first zone and second catalyst composition present in second zone and wherein the first zone form s from 40-90% of an axial length and second zone forms from 60-10% of axial length of the SCR catalyst article (paragraphs 0007, 0014, 0142). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, Yang discloses first catalyst composition (i.e., 1st coating layer) is first zone and second catalyst composition (i.e., second coating layer) present as second zone and first zone extends from inlet end and second zone extends from outlet end (see paragraphs 0094, 0113, 0123, 0142).
Regarding claim 18, Yang discloses small pore molecular sieve of second layer catalyst composition has framework defined by framework type code selected from CHA, AEI (see paragraph 0052, claims 17-18).
Regarding claim 20, Yang discloses Fe containing molecular sieve includes 1-15 wt.% of iron based on total weight iron containing molecular sieve. (paragraph 0024, see also claim 9). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SMITA S PATEL whose telephone number is (571)270-5837. The examiner can normally be reached on 9AM-5PM EST M-W.
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).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached on 5712705713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 07/19/2026
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