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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Application
Claims 1, 2, 18, 19 and 22-32 are pending and presented for examination. Claims 18, 19, 22-26, 31 and 32 were elected with traverse. As such claims 1, 2, and 27-30 are withdrawn by the Examiner as non-elected.
The traversal is that ultimately the Office and Applicants regard the “special technical feature” as differing. The Office has established in the Restriction Requirement dated 9 February 2026 that the special technical feature is regarded to be cerium oxide nanoparticles, Applicants regard it as cerium oxide particles having good abrasive properties (Election dated 3 April 2026 at 3), but this is not claimed. Furthermore, the combination of Takahashi and Manteghi teaches claim 1, while it does not disclose the residual carbon, that is not present in claim 1 such that both claim 1 and claim 18 (representative of Groups I & II) are drawn to a cerium oxide nanoparticle having such a residual carbon amount, and as further discussed supra, that is also not novel or inventive and thusly the special technical feature does not make a contribution over the prior art. As such, THIS RESTRICTION REQUIREMENT IS MADE FINAL.
Applicants are requested to ensure the claims are in proper format for US practice (i.e., removal of “characterized in”, etc.).
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
Claim Objections
Claim 19 is objected to because of the following informalities: The phrase “notably pursuant to ISO 13322-2 (2006)” is written in a manner which suggests it is limiting the dynamic image analysis, though it is unclear how this would affect the claim, the usage of “notably” should be removed such that the claim reads “. . . a Dynamic Image Analysis pursuant to ISO 13322-2 (2006)”. Appropriate correction is required.
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 18, 19, 22, 24, 25 and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 8173039 to Nho et al. (hereinafter, “Nho at __”) with “SEM vs. TEM: How to choose the most suitable electron microscopy technique for your application” to Gunes (while this was available online in October of 2024, as it is an evidentiary reference showing the similarities between measuring between SEM & TEM it need not be prior art, see MPEP §2124).
Regarding claims 18, 22, 24, 25 and 31, Nho discloses in “Fig. 3” CeO2 particles having a spheroidal shape which has over 80 particles in the image and represents an average as measured by scanning electron microscope of “Fig. 3”) as provided below.
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The Office utilized ImageJ software to determine the average diameter in this figure which clearly has over 80 particles, and yielded an average diameter of 39.4 nm which would be 39.4/(6/7.22*0.052)=39.4/16=2.46 with a SSA of 52 m2/g and a residual carbon of 43 ppm. From further analysis of “Example 2” and “Figure 2”, ~140 nm average with 113 m2/g SSA and 43 ppm residual carbon, the RI is 140/(6/7.22*.113))=140/7.35=19.05. To the extent the software may not accurately measure the values it is noted that 100-300 nm average for “Example 2” covers RI values of 13.60 to 40.82.
While the averages given are from SEM averaging, Grunes sets forth that while SEM and TEM are used for different particle sizes, TEM and SEM will have the same level of resolution down to 10-30 nm, but TEM would give tenths of nm that the SEM would not capture. Given that the degree of certainty between TEM & SEM and that those values exhibited in Nho are not below 10 nm, it would follow that the type of microscopy utilized would not have an appreciable difference such that one of ordinary skill in the art would find that Nho discloses with adequate certainty the average particle sizes being equivalent to that of TEM as measured by the SEM in Nho.
As to claim 19, while dynamic image analysis is not employed in Nho, ImageJ (which is used in ISO 13322-2 as it requires a “binary” image be produced) calculated the circularity to be 0.952 for “Figure 3”.
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, 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.
Claims 23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Nho as applied to claim 18 above.
Regarding claim 23, Nho discloses that the SSA can be between 20-250 m2/g (Nho at 5:50-55) which overlaps that range instantly claimed such that a prima facie case of obviousness exists (See MPEP 2144.05).
As to claim 25, to the extent “Example 2” is not at 140 nm, it is noted that 100-300 nm overlaps and is thusly prima facie obvious.
Claim 26 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over Nho.
Regarding claim 26, Nho discloses the cerium oxide particle of claim 18, though the claim requires that it be “obtained by the process comprising . . .” which renders the claim that of a product-by-process type which is examined on the merits of the product, not how it is made. While the product is claimed as dependent upon the process made, there is nothing to suggest that the instant product would have different properties, structure or aspects than that in the prior art, absent evidence to the contrary. Accordingly, at minimal one of ordinary skill in the art would find it obvious that prior art product and the instant product would have the same product aspects as that instantly claimed. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) also MPEP 2113, et seq. As shown supra the product is known.
Claims 18, 22-24, 26, 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 20070048205 to Katusic et al. (hereinafter, “Katusic at __”) with “A comparison of TEM and DLS methods to characterize size distribution of ceramic nanoparticles” to Souza et al. (hereinafter, “Souza at __”) as an evidentiary reference to the approximately size difference between DLS & TEM.
Regarding claims 18, 22-24, 31 and 32, Katusic discloses ceria nanoparticles of average diameter of 5-50 nm, and a BET surface area of 25-150 m2/g, and a carbon content of less than 0.5% (as 99.5% of the particle is ceria, Katusic at “Abstract”). However, Katusic discloses that dynamc light scattering is utilizes, not TEM. However, DLS measures hydrodynamic which only measures the hydrodynamic diameter which is larger than TEM which measures the core diameter, and according to Souza at “4. Conclusions”, DLS measures particle sizes ~20% higher than TEM, so one of ordinary skill in the art would actually, when considering this difference, expect the particle sizes when measured via TEM vis a vis Katusic to be between 4 and 40 nm. Given these values the RI values would be between 4/(6/(7.22*0.025)) to 40/(6/(7.22*0.125)) between 0.12 and 6.01 which overlaps the values in claims 18 and 31. The surface area also overlaps for claims 22 & 23, the particle size for claim 24, and the residual carbon amount for claim 32. It has been held that overlapping a claimed range is prima facie obvious (see MPEP 2144.05).
Regarding claim 26, Katusic discloses the cerium oxide particle of claim 18, though the claim requires that it be “obtained by the process comprising . . .” which renders the claim that of a product-by-process type which is examined on the merits of the product, not how it is made (see supra regarding MPEP 2112 V).
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 18, 22-26, 31 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 18-22 of copending Application No. 18550222 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because with respect to instant claim 18, 31 and 32, the reference application claim 15 discloses an overlapping RI and as such is prima facie obvious (>2 (or 3.5) vs. >2.4, see MPEP 2144.05, same holds true for residual carbon values) and instant claim 18 discloses spheroids while the more generic “particles” are disclosed in reference claim 15. Reference claims 18-21 also have overlapping subject matter with instant claims 22-25. Instant claim 26 and reference claim 22 both recite similar product-by-process claims. Both applications were filed on the same day so only a one-way test is required (see MPEP §804).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“The characterization of purified citrate coated cerium oxide nanoparticles prepared via hydothermal synthesis” to Hancock et al. (cited and provided by Applicants) discloses hexagonal not spheroidal particle of ceria.
Conclusion
Claims 18, 19, 22-26, 31 and 32 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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