CTNF 18/547,684 CTNF 86574 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1 and 2 are rejected under 35 U.S.C. 102 ( a)(1 ) as being anticipated by EP 3181224 (hereinafter, MINAMI) . Regarding claims 1 and 2, MINAMI teaches a production method comprising adding a hydrocarboxylic acid to an aqueous solution containing a Ce salt, a Zr salt, an Al salt and firing the product to obtain a fired product containing a ceria-zirconia-based regular array phase precursor and an alumina-based composite oxide precursor (Abstract). Example 1 is a composite that contains Ce, Zr, and Al [0100-0105] and has a specific surface area of 2.9 m 2 /g [0173] . 07-15-03-aia AIA Claim s 1, 2, 4-10, and 12-23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2021/149498 (hereinafter NABETA) . 07-15-02-aia The applied reference has a common inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. Regarding claims 1 and 2, NABETA teaches a composite oxide powder including cerium, zirconium, and aluminum wherein the specific surface area is 0.5 m 2 /g to 10 m 2 /g (Abstract; pp. 2, 6, and 11). Regarding claim 4, NABETA teaches the composite oxide powder has particle size D50 is 0.5 µm or more and 20 µm or less (pp. 6 and 11) Regarding claim 5, NABETA teaches the composite oxide powder has a particle D99 is 60 µm or less (pp. 6 and 11). Regarding claim 6, NABETA teaches the composite oxide powder has a single grain crushing strength is in the range of 50 N or more and 300 N or less (pp. 6 and 11). Regarding claims 7-10, NABETA teaches the composite oxide powder contains a cerium content of 65% by mass or more and 95% by mass or less in terms of oxide, the zirconium content is in the range of 0.1% by mass or more and 30% by mass or less in terms of oxide, and aluminum content is in the range of 0.1% by mass or more and 10% by mass or less in terms of oxide (pp. 6-7). Regarding claim 12, NABETA teaches the composite oxide powder comprises CeAlO 3 (p. 7). Regarding claims 13-15, NABETA teaches the composite oxide powder contains rare earth elements other than cerium (yttrium and lanthanum) in the range of 0.1% by mass or more and 5% by mass or less in terms of oxide (pp. 7 and 10). Regarding claim 16, NABETA teaches the composite oxide powder contains alkaline earth elements (yttria) (p. 7). Regarding claim 17, NABETA teaches the composite oxide powder is used for a friction material (p. 7). Regarding claims 18 and 20, NABETA teaches 100% by mass of the composite oxide powder is used for the friction material composition (p. 7). The friction material composition is molded and used as a friction material for brake pads (p. 7). The friction material composition contains a friction modifier, a fiber base material, and a binder, and contains the composite oxide powder as the friction modifier (p. 14). Regarding claim 19, as discussed in paragraph 15 above, NABETA teaches the molded body of the friction material composition wherein the content of the composite oxide powder in the friction material composition is 5% by mass or more and 20% by mass or less when the entire friction material composition is 100% by mass (p. 14). Regarding claim 21, as discussed in paragraph 15 above, NABETA teaches the molded body of the friction material composition. The composition has a first fade test measured under the following measurement condition A was carried out 9 times according to the standard JASO C406 and the average value of the value µ or more. <Measurement condition A> Braking initial speed: 100 km/h Braking Interval: 35 seconds Brake temperature before braking at the time of the first measurement is 80 o C Braking deceleration: 0.45 G Breaking frequency: 9 braking times (p. 8). Regarding claim 22, as discussed in paragraph 15 above, NABETA teaches the molded body of the friction material composition. The composition has an average value of friction coefficients measured under the following measurement condition B according to the standard JASO C406, is 0.40 or more. <Measurement condition B> Braking initial speed: 65 km/h Brake temperature before braking: 120 o C Braking deceleration 0.35G Measurements: 200 (p. 8) Regarding claim 23, as discussed in paragraph 15 above, NABETA teaches the molded body of the friction material composition. The composition has an average value of the friction coefficient at 8 times of measurement in the second efficacy test measured under the following measurement condition C is defined as the friction coefficient X in accordance with JASO C406. The average value of the friction coefficient in the second efficacy test measured under condition D is defined as the friction coefficient Y in accordance with JASO C406. The difference in friction [(friction coefficient X)- (friction coefficient Y)] is 0.12 or less. <Measurement C> Braking initial speed: 100 km/h Brake temperature before braking: 80 o C Braking deceleration: 0.2 G Number of measurements: 8 <Measurement D> Braking initial speed: 100 km/h Brake temperature before braking: 80 o C Braking deceleration: 0.7 G Number of measurements: 8 (p. 8). 07-15-03-aia AIA Claim s 1, 2, 4-10, and 12-23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2021/225181 . To further advance the prosecution of this invention, NABETA et al. (U.S. Publication No. 2022/0396494, hereinafter NABETA ‘494), which is an English equivalent of WO 2021/225181 will be used in the rejection . 07-15-02-aia The applied reference has a common inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. Regarding claims 1 and 2, NABETA ‘494 teaches a complex oxide powder that contains cerium, zirconium, and aluminum which has a specific surface area of 0.5 m 2 /g or more and 10 m 2 /g or less (Abstract; [0013-0014]). Regarding claim 4, NABETA ‘494 teaches the complex oxide powder has a particle diameter D 50 is 0.5 µm or more and 20 µm or less [0020]. Regarding claim 5, NABETA ‘494 teaches the complex oxide powder has a particle diameter D 99 of 60 µm [0023] Regarding claim 6, NABETA ‘494 teaches the complex oxide powder has a grain crushing strength of 50 N or more and 300 N or less [0024]. Regarding claims 7-9, NABETA ‘494 teaches the complex oxide powder has content of cerium is 40% by mass or more and 95% by mass or less in terms of oxide; a content of zirconium is 0.1% by mass or more and 50% by mass or less in terms of oxide; and a content of aluminum is 0.1% by mass or more and 10% by mass or less in terms of oxide [0026]. Regarding claim 10, NABETA ‘494 teaches the complex oxide powder has a content of cerium is 49% by mass or more and 91% by mass or less in terms of oxide; the content of zirconium is 1% by mass or more and 43% by mass or less in terms of oxide; and the content of aluminum is 1% by mass or more and 8% by mass or less in terms of oxide [0031]. Regarding claim 12, NABETA ‘494 teaches the complex oxide powder contains CeAlO 3 [0032]. Regarding claims 13-15, NABETA ‘494 teaches the complex oxide powder contains the rare earth element other than cerium [0034] in the amount of 0.1% by mass or more and 5% by mass or less in terms of oxide [0036]. The rare earth element other than cerium is one or more selected from the group consisting of yttrium and lanthanum [0039]. Regarding claim 16, NABETA ‘494 teaches the complex oxide powder may contain an alkaline earth element [0040]. Regarding claim 17, NABETA ‘494 teaches the complex oxide powder is used for a friction material [0042]. Regarding claims 18 and 20, NABETA ‘494 teaches a friction material contains a friction modifier, a fiber base material, and a binder, wherein the friction modifier is the complex oxide powder [0044]. The friction material composition contains the complex oxide powder as the friction modifier, whereby, the friction material composition is molded, and the molded product is used for a friction material of a brake pad [0045 and 0048]. Regarding claim 19, as discussed in paragraph 32 above, NABETA ‘494 teaches the molded body of the friction material composition. The composition has a content of the complex oxide powder is 5% by mass or more and 20% by mass or less when a total of the friction material composition is 100% by mass. Regarding claim 21, as discussed in paragraph 32 above, NABETA ‘494 teaches the molded body of the friction material composition. The composition has a first fade test measured under the following measurement condition A was carried out 9 times according to the standard JASO C406 and the average value of the value µ or more. <Measurement condition A> Braking initial speed 100km/h Braking Interval 35 seconds Brake temperature prior to braking during first measurement: 80 o C Braking deceleration: 0.45 G Breaking frequency: 9 [0051-0057]. Regarding claim 22, as discussed in paragraph 32 above, NABETA ‘494 teaches the molded body of the friction material composition. The composition has an average value of friction coefficients measured under the following measurement condition B according to the standard JASO C406, is 0.40 or more. <Measurement condition B> Braking initial speed: 65 km/h Brake temperature prior to braking: 120 o C Braking deceleration 0.35G Measurements: 200 [0058-0063]. Regarding claim 23, as discussed in paragraph 32 above, NABETA ‘494 teaches the molded body of the friction material composition. The composition has an average value of the friction coefficient at 8 times of measurement in the second efficacy test measured under the following measurement condition C is defined as the friction coefficient X in accordance with JASO C406. The average value of the friction coefficient in the second efficacy test measured under condition D is defined as the friction coefficient Y in accordance with JASO C406. The difference in friction [(friction coefficient X)- (friction coefficient Y)] is 0.12 or less. <Measurement C> Braking initial speed: 100 km/h Brake temperature prior to braking: 80 o C Braking deceleration: 0.2 G Number of measurements: 8 [0064-0067] <Measurement D> Braking initial speed: 100 km/h Brake temperature prior to braking: 80 o C Braking deceleration: 0.7 G Number of measurements: 8 [0068-0071]. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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 non-obviousness. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/149498 (hereinafter NABETA) . Regarding claim 11, NABETA teaches the present invention, see paragraph 6 above. More specifically, NABETA teaches the composite oxide powder contains a cerium content of 65% by mass or more and 95% by mass or less in terms of oxide, the zirconium content is in the range of 0.1% by mass or more and 30% by mass or less in terms of oxide, and aluminum content is in the range of 0.1% by mass or more and 10% by mass or less in terms of oxide (pp. 6-7). However, NABETA does not teach a preferred embodiment wherein the cerium-based complex oxide powder has a total content of cerium, zirconium, and aluminum is 60% by mass or more in terms of oxide. Given NABETA teaches 65% by mass to 95% by mass of Ce, 0.1% by mass to 30% by mass of Zr, and 0.1% by mass to 10% by mass of Al (pp. 6-7), it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch , 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer , 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955) . 07-21-aia AIA Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/225181 . To further advance the prosecution of this invention, NABETA et al. (U.S. Publication No. 2022/0396494, hereinafter NABETA ‘494), which is an English equivalent of WO 2021/225181 will be used in the rejection. Regarding claim 11, NABETA ‘494 teaches the present invention, see paragraph 22 above. More specifically, NABETA ‘494 teaches the complex oxide powder has content of cerium is 40% by mass or more and 95% by mass or less in terms of oxide; a content of zirconium is 0.1% by mass or more and 50% by mass or less in terms of oxide; and a content of aluminum is 0.1% by mass or more and 10% by mass or less in terms of oxide [0026]. However, NABETA ‘494 does not teach a preferred embodiment wherein the cerium-based complex oxide powder has a total content of cerium, zirconium, and aluminum is 60% by mass or more in terms of oxide. Given NABETA ‘494 teaches 40% by mass to 95% by mass of Ce, 0.1% by mass to 50% by mass of Zr, and 0.1% by mass to 10% by mass of Al [0026], it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch , 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer , 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955) . Double Patenting 08-33 AIA The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-35 Claim s 1, 2, and 4-23 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim s 1, 3-5, and 7-19 of co-pending Application No. 17/611,846 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons given below. U.S. Application No. ‘846 claims a complex oxide powder comprising cerium, zirconium, and aluminum, and having a specific surface area of 0.5 m2/g or more and 10 m2/g or less, wherein a content of cerium is 40% by mass or more and 95% by mass or less in terms of oxide; a content of zirconium is 0.1% by mass or more and 50% by mass or less in terms of oxide; and a content of aluminum is 0.1% by mass or more and 10% by mass or less in terms of oxide. The scope of the present claims encompasses the scope of the claims in U.S. Application No. ‘846 . This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Allowable Subject Matter Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. WO 2021/149498 (hereinafter, NABETA) and WO2021/225181 (English equivalent of U.S. Publication No. 2022/0396494, hereinafter NABETA ‘494)) do not teach wherein the cerium complex oxide powder has a crystallite diameter of 10 nm or more and 80 nm or less. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST. 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, Joseph Del Sole can be reached at (571) 272-1130. 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. DEVE V. HALL Primary Examiner Art Unit 1763 /DEVE V HALL/Primary Examiner, Art Unit 1763 Application/Control Number: 18/547,684 Page 2 Art Unit: 1763 Application/Control Number: 18/547,684 Page 3 Art Unit: 1763 Application/Control Number: 18/547,684 Page 4 Art Unit: 1763 Application/Control Number: 18/547,684 Page 5 Art Unit: 1763 Application/Control Number: 18/547,684 Page 6 Art Unit: 1763 Application/Control Number: 18/547,684 Page 7 Art Unit: 1763 Application/Control Number: 18/547,684 Page 8 Art Unit: 1763 Application/Control Number: 18/547,684 Page 9 Art Unit: 1763 Application/Control Number: 18/547,684 Page 10 Art Unit: 1763 Application/Control Number: 18/547,684 Page 11 Art Unit: 1763 Application/Control Number: 18/547,684 Page 12 Art Unit: 1763 Application/Control Number: 18/547,684 Page 13 Art Unit: 1763 Application/Control Number: 18/547,684 Page 14 Art Unit: 1763 Application/Control Number: 18/547,684 Page 15 Art Unit: 1763