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 .
Priority
Applicant's claim of priority under 35 U.S.C. §371 as a national entry of application of PCT/EP2022/057418 filed March 22, 2022, which claims priority to German application DE10 202 107 129.1 filed March 23, 2021, is hereby acknowledged.
Claim Rejections - 35 USC § 101
Claims 10 and 11 are rejected under 35 U.S.C. 101 because the claimed invention is drawn to non-statutory matter. Independent claim 10 is drawn to the use of an article/device, which is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter but instead are drawn to a “use” of an article. Therefore, the claimed invention lacks statutory patentable utility.
Correction/amendment of these claims is respectfully requested in a subsequent reply to this action.
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.
Claim 1, and claims 2-9 that depend therefrom, are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-13 of U.S. Patent No. 12,270,326 B2 (‘326 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because the wall-flow filter coating for removing particles from the exhaust gas of a combustion engine of independent claim 1 of the ‘326 patent further comprises a sintered coating.
However, they are not patentably distinct from each other because both sets of claims are drawn to a wall-flow filter having a length “L” for reducing particle emissions in the exhaust gas of internal combustion engine, wherein the wall-flow filter comprises channels “E” and “A” that extend in parallel between a first and a second end of the wall-flow filter, which are separated by porous walls forming surfaces “OE” and “OA”, respectively, and wherein the channels E are closed at the second end and the channels A are closed at the first end, wherein the wall-flow filter can possess multiple coatings, wherein the coatings applied to the surfaces OE and OA are in separate coating steps, and wherein each of the coatings possess a specified length in proportion to length L.
The first two coatings in present independent claim 1 are catalytically active coatings. Coating Z in dependent claims 2-7 of the ‘326 patent is a catalytically active coating (col. 6, line 60 to col. 7, line 12). The filter of the ‘326 patent can have multiple coatings as shown with dependent claims 4 and 5 of the ‘326 patent
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J FIGUEROA whose telephone number is (571)272-8916. The examiner can normally be reached on 8:30 am -6:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John J Figueroa/
Primary Examiner, Art Unit 1763
February 10, 2026