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 I, directed to claims 1-10, in the reply filed on 30 June 2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 traverse in the reply filed on 30 June 2026.
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 7-8 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 7 recites the limitation "calculated according to the Composition Analysis Test Method" in line 3. There is insufficient antecedent basis for this limitation in the claim as the method has not been defined in the claim or any preceding claims. For the purpose of examination, if a composition in the prior art was identified to have the instantly claimed amount of long-strand PTFE fibrils, it was determined to have met the claim limitation because the composition had to be analyzed in some way to calculate the reported values.
Claim 8 recites the limitation "calculated according to the Composition Analysis Test Method" in line 3. There is insufficient antecedent basis for this limitation in the claim as the method has not been defined in the claim or any preceding claims. For the purpose of examination, if a composition in the prior art was identified to have the instantly claimed amount of active particles, it was determined to have met the claim limitation because the composition had to be analyzed in some way to calculate the reported values.
Claim Rejections - 35 USC § 103
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over International Publication WO 2020/069972A1 in view of Shi et al. (Journal of Membrane Science 2021, 629, 119294).
With regard to claim 1, WO 2020/069972A1 (herein shortened to WO ‘972) teaches a film comprising solid catalyst particles (i.e. the active particles) and PTFE in fibrillated form (pp. 6, lines 18-20; pp. 8, lines 6-7). WO ‘972 does not teach that the film comprises short-strand and long-strand PTFE fibrils. However, Shi et al. teaches that commercially available PTFE resins often used to form fibrillated PTFE contain multiple sizes of particles (pp. 2, right col., lines 2-6; lines 37-55) which form larger or smaller fibrils after processing (Fig. 5A). Therefore, commercial resins, such as the material studied, would form a mixture of short and long-strand fibrils. WO ‘972 generally teaches that fibrillated PTFE can be made by applying a shearing force to particles of PTFE resin particles. As Shi et al. teaches that commercial resins which contain multiple particles sizes are employed to form fibrillated PFTE (pp. 2, left col., lines 15-20), there is art-recognized suitability for the use of a commercial PTFE resin, such as CGF216G emulsion grade powder analyzed by Shi et al., to form fibrillated PTFE materials or matrices as taught by WO ‘972, and the resulting product would contain short-strand and long-strand fibrils in the matrix due to the varying particle size in the unmodified starting material. See MPEP 2144.07.
With regard to claim 2, WO ‘972 does not explicitly state that at least a portion of the plurality of active particles and at least a portion of the plurality of PTFE particles adopt a catenated or conglomerated structure when the composition is in an unstretched state. However, WO ‘972 teaches that the film (i.e. the matrix) is produced by first mixing together solid catalyst particles and a fibrillatable organic polymer (e.g. PTFE) in a pulverized state to reach a homogenous mixture (pp. 12, lines 37-42). It is the examiner’s position that the homogenous mixture of catalytically active particles and polymer particles prior to any further processing reads to a composition with a conglomerated structure while the composition is in an unstretched state.
With regard to claim 3, WO ‘972 teaches that the matrix may include solid catalyst particles that catalyze9 chemical reactions (pp. 5, lines 22-23) which reads to the active particles comprising a catalyst as instantly claimed.
With regard to claims 4 and 5, WO ‘972 teaches that the solid catalyst active particles can be made of a catalytically active material such as oxides of manganese, copper, or lanthanides (which include cerium; pp. 5, line 41-pp. 6, line 6) as recited in claim 5. As claim 5 is dependent on claim 4, it is the examiner’s position that the metal oxides taught by WO ‘972 as catalytic particles would be capable of catalyzing ozone destruction as recited in claim 4.
With regard to claim 6, WO ‘792 teaches that the catalytically active material may be a zeolite or a clay (pp. 5, lines 18-20) and are preferably porous (pp. 6, lines 36-40). Both zeolites and clays are known adsorbents, most often as physisorbents. Both classes are capable of adsorbing small compounds (acidic, basic, organic, or inorganic).
With regard to claim 7, WO ‘972 does not teach that the matrix comprises 0.01-30 wt% long-strand fibrils based on the total weight of the composition. However, Shi et al. teaches that fibril length is directly related to pore size (Fig. 6). Furthermore, Shi et al. teaches that pore/channel size in a fibrillated PTFE material can affect the solvent which can pass through the matrix (pp. 2, left col., lines 1-9). Therefore, it would have been obvious to a person of ordinary skill in the art to optimize the amount of long-strand PTFE fibrils in the composition in order to achieve a desired pore size for effective phases separation (pp. 2, left col., lines 10-13), which is applicable to a reaction environment.
With regard to claim 8, WO ‘972 teaches that the fibrillated organic polymer may preferably comprise a mass fraction of 0.08-0.12 of the total weight of the film (pp. 7, lines 18-19). Therefore, the catalytic particles (i.e. active particles) account for 88-92 wt% of the film matrix, which is within the instantly claimed range of 50-95 wt%.
With regard to claim 9, WO ‘972 teaches that the film (i.e. matrix) may be supported on a solid substrate (pp. 8, lines 32-35) and may be disposed onto the surface of said substrate (pp. 9, line 7).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over WO ‘972 and Shi et al. as applied to claim 9 above, and further in view of Wu et al. (Fusion Engineering and Design 2015, 92, pp. 46–51).
With regard to claim 10, WO ‘972 teaches that the substrate may be made of polymers, silicon carbide, or ceramic material (pp. 8, lines 35-42). WO ‘972 also teaches the substrate may be a net-like or mesh structure. WO ‘972 does not explicitly teach one of the recited materials in combination with a honeycomb structure. However, honeycombs substrates are widely used as catalyst supports for their advantageous properties (pp. 47, left col., lines 2-6) and Wu et al. specifically employ cordierite honeycombs as a substrate for an Pt/alumina coating for catalytic oxidation of hydrogen isotopes in a gaseous form (pp. 47, left col., lines 13-17). Therefore, it would have been obvious to a person of ordinary skill in the art to utilize a cordierite honeycomb as a substrate for the composition as WO ‘972 teaches using ceramic materials as a substrate and Wu et al. demonstrates art-recognized suitability of cordierite honeycombs as catalytic matrix supports. See MPEP 2144.07.
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 1 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/527,047 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the reference discloses a composition comprising a matrix of a plurality of PTFE fibrils and a plurality of active particles wherein PTFE fibrils further comprise both shirt-strand and long-strand PTFE fibrils as instantly claimed in claim 1. Claim 2 of the reference application further teaches that the matrix is disposed on a porous substrate as instantly claimed in claim 9.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/947,856 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference application teaches a machined matrix comprising long strand PTFE fibrils, short-strand PTFE fibrils, and active particles, and thus teaches all of the recited elements in claim 1 of the instant application. Claim 1 of the reference application teaches that the composition is part of a tape, and therefore the matrix must be disposed on at least a portion of an external surface of a substrate as instantly claimed in claim 9.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORDECAI M LEAVITT whose telephone number is (571)272-6637. The examiner can normally be reached Monday-Friday 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHRISTINA JOHNSON can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MORDECAI M LEAVITT/Examiner, Art Unit 1742
/MONICA A HUSON/Primary Examiner, Art Unit 1742
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