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 .
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 18 is 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.
With respect to claim 18, it is unclear if the Applicant is the claim is referencing the three-way catalytic converter of claim 17 or a different convertor.
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.
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.
Claim(s) 10-16 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yasushi et al (JP H0994463A, English translation provided is utilized for the rejection).
With respect to claims 10 and 12, Yasushi discloses a wall flow filter (see abstract) including on and/or in in input surface a powder which increases the filtration efficiency of the filter (see paragraph 0008) wherein powder is selected Alumina, silica, titania, titania-alumina or titania-silica (see page 3, last paragraph, page 4 first paragraph).
Yasushi fails to teach, the functional limitation wherein the powder increases the filtration efficiency of the filter in the fresh state.
However, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Thus, it is the Examiner position that the claimed Wall-filter is anticipated by Yasushi, as currently claimed.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004)
Alternatively, it would have been obvious to one with ordinary skill in the art, before the effective filing date to modify Yasushi with the claimed functional language through routine experimentation. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer."
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
With respect to claim 11, Yasushi discloses the limitation the limitation of claim 10.
Yasushi does not disclose wherein the powder shows a reduction in the surface area by 15-50 % after aging for 6 hours at 1000°C.
However, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
With respect to claim 13, Yasushi discloses the limitation the limitation of claim 10.
Yasushi does not disclose wherein filtration efficiency of the powder-containing filter in the fresh state is between 85 - 99.9 %.
However, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
With respect to claim 14, Yasushi discloses the limitation the limitation of claim 10.
Yasushi does not disclose wherein the powder is applied to the filter in an amount of 1 - 40 g/l.
However, even 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).
In this case, Yasushi discloses all the claimed structural limitation of claimed wall-filter.
With respect to claim 15, Yasushi discloses the limitation the limitation of claim 10.
Yasushi does not disclose the claimed functional process as claimed.
However, even 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).
In this case, Yasushi discloses all the claimed structural limitation of claimed wall-filter.
With respect to claim 16, Yasushi discloses the limitation the limitation of claim 10.
Yasushi further discloses wherein filter was catalytically coated prior to being exposed to the thermolabile powder (see paragraph 0011).
Claim Rejections - 35 USC § 103
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasushi et al (JP H0994463) in further in view of Eckhoff et al (US 2012/0148464).
With respect to claim 17-18, Yasushi discloses a wall flow filter (see abstract) including on and/or in in input surface a powder which increases the filtration efficiency of the filter (see paragraph 0008) wherein powder is selected Alumina, silica, titania, titania-alumina or titania-silica (see page 3, last paragraph, page 4 first paragraph).
Yasushi fails to discloses wherein the wall filter is further utilized with a exhaust gas system including a catalytic converter, as claimed.
However, in a related system Eckhoff discloses wherein exhaust gases of internal combustion engines operated with a predominantly stoichiometric air/fuel mixture are purified, in conventional processes, by means of three-way catalytic converters (see abstract) and further discloses wherein the system can utilized with an additional wall filter arranged in the underbody region of a car (see paragraph 0098) .
Thus, the claimed Exhaust system would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, as the combination of the claimed conventional exhaust part to create a conventional system would have been obvious to one with ordinary skill in the art.
Conclusion
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/JUAN C VALENCIA/Examiner, Art Unit 1771
/Randy Boyer/
Primary Examiner, Art Unit 1771
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