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/Restriction
Applicant’s 4-29-26 election of Group II (claims 9-14) is acknowledged. As applicant did not distinctly and specifically point out the/any supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 1-8 and 15-16 are withdrawn from further consideration per 37 CFR 1.142(b) as drawn to nonelected Groups, there being no allowable generic or linking claim.
Drawings
The 10-27-23 drawings are objected to because the text/captions therein are of such poor/blurry quality as to render them illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 12 and 14 are objected to for the following informalities: for grammar and clarity, claim 12’s “to from the” must be changed to “to form the”, while claim 14’s “v)” must be changed to “ix)”. Appropriate correction is required, while avoiding introducing new matter.
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.
Claim 10 is rejected under 35 U.S.C. 112(b)/2nd par. as indefinite for not particularly pointing out and distinctly claiming 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 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). Here, claim 10 recites the broad recitation “in a single dose or in multiple doses,” and the claim also recites “preferably in a single dose or two doses”, which is the narrower statement 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. While interpretation (a) has been applied via the broadest reasonable interpretation standard (MPEP 2111.03), this rejection nevertheless needs addressing.
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.
Claims 9-11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP4063003A1 (published 9-28-22) (“’003”) (see applicant’s 10-31-23 IDS). Regarding claims 9-11, ‘003 discloses a method comprising i) providing a monolith article having an inlet-end (front zone; “IFZ”) and an outlet-end (rear zone; “ORZ”), ii) applying a washcoat to >80% of the ORZ’s length (implicitly in a single dose as no dosing regimen is specified; see MPEP 2112 vis-à-vis implicit disclosure), and iii) applying an inorganic oxide (here, zeolitic) coating to the IFZ. See ‘003 at, e.g., par. 71. It is noted that since ‘003 specifies the coating length extent of its ORZ but not its IFZ, 100% of the IFZ’s length is reasonably understood to be so coated. MPEP 2112 (implicit disclosure). Note also that as the sequence of the claimed steps is not specified, ‘003’s sequence meets the claim.
Regarding claim 14, ‘003 dries its inorganic oxide coating @1,100oC for 10h to sinter said coating; this is regarded as calcining said coating as well, given the high T employed. See ‘003 at, e.g., par. 71; MPEP 2112.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claim 13 is rejected under AIA 35 U.S.C. 103 as being unpatentable over ‘003. Regarding claim 13, 100% of the IFZ’s length is reasonably understood to implicitly be so coated as detailed above. While this value lies slightly above the claimed 99% maximum, this slight difference is nevertheless not considered to connote patentability, as ‘003’s implicit 100% IFZ coating extent is considered to be sufficiently close to at least the upper end of the claimed range such that those of ordinary skill in the art would reasonably expect the former and latter coating extents to have the same or at least substantially similar properties; a prima facie case of obviousness exists where the claimed and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (or results). See MPEP 2144.05 I; Titanium Metals Co. of Am. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985); Accord, In re Kirsch, Barnby, and Potts, 182 USPQ 286, 290 (CCPA 1974) (finding that prior art teachings lying slightly outside of a claimed range nevertheless negate non-obviousness, especially in the absence of any criticality statements regarding the claimed range). Additionally and/or alternatively, given ‘003’s (implicit) disclosure of a 100% IFZ coating extent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ascertain and employ a desired IFZ coating extent, such as within the claimed range, via routine experimentation; it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP 2144.05, citing In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Claim 12 is rejected under AIA 35 U.S.C. 103 as being unpatentable over ‘003 in view of WO2011/151711 (published 12-8-11) (“’711”) (see applicant’s 10-31-23 IDS). Regarding claim 12, ‘003’s teachings are as detailed above. While ‘003 does not spray/apply its inorganic oxide coating as a dry mixture of inorganic (oxide) particles and silicone resin (‘003’s inorganic oxide zeolite particles are in fact applied as a dry powder, see ‘003 at, e.g., par. 71), ‘711 so teaches.
‘711 teaches that employing polydimethylsiloxane (“PDMS”) along with inorganic oxide (i.e. refractory) particles, such as zeolites, for coating purposes desirably binds the particles together, and with the substrate so coated, to form a more mechanically durable coating. See ‘711 at, e.g., p. 14, ln. 5-20. Given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘003’s overall methodology by mixing its inorganic oxide zeolite particles with PDMS and employing such a mixture as its dry powder in its step iii) coating detailed above as taught by ‘711, to thereby achieve ‘711’s taught advantage of desirably binding the zeolite and PDMS particles together and enhancing the mechanical durability of the resulting step iii) coating. MPEP 2143 I.(G).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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. 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.
/DANIEL BERNS/ July 10, 2026
Primary Examiner
Art Unit 1736
Prosecution Insights