DETAILED ACTION
Claims 1-2, 5-8, 19-25, 27-35, 38-40 and 43-44 are pending, with claims 29-30, 35, 38-40 and 43-44 being withdrawn after consideration.
Claims 1-2, 5-8, 19-25, 27-28 and 31-34 are rejected.
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 with traverse of Group I, Species (a-i), claims 1-2, 5-8, 19-25, 27-28 and 31-34 in the reply filed on 09/24/2025 is acknowledged. The traversal is on the ground(s) that “Sanchez's preparation method is distinct from the preparation method of the claimed composition” and “Sanchez's micropores and intermediate pores do not relate to the pores as recited by claim 1”.
The argument and evidence provided in the Remarks filed on 09/24/2025 overcomes the previous 103 rejections of record.
Claims 29-30, 35, 38-40 and 43-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/24/2025.
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 1-2, 5-8, 19-20, 22-25 and 31-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-9, 26, 31, 33 and 35 of copending Application No. 18/293,416 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as set forth below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, copending claim 1 claims a composition which is:
a composition C1 which is based on Al and Ce in the form of oxides; or
a composition C2 which is based on Al, Ce and La in the form of oxides,
with the following proportions:
the proportion of CeO2 is between 5.0 wt % and 35.0 wt % (i.e., the proportion of CeO2 falls within the claimed range);
the proportion of La2O3 (for composition C2 only) is between 0.1 wt % and 6.0 wt %;
the remainder being Al2O3,
and exhibiting the following porosity profile:
a pore volume in the range of pores with a size of between 5 nm and 1000 nm (PV5-1000 nm) which is lower than 1.30 mL/g;
a pore volume in the range of pores with a size of between 100 nm and 1000 nm (PV100-1000 nm) which is strictly higher than 0.10 mL/g;
these pore volumes being determined by means of a mercury porosimetry technique;
and exhibiting the following properties:
a mean size of crystallites after calcination in air at 1100° C for 5 hours (D1100° C-5h) which is lower than 45.0 nm;
a mean size of crystallites after calcination in air at 900° C for 2 hours (D900° C-2h) which is lower than 25.0 nm; and
an increase ΔD of the mean size of the crystallites lower than 30.0 nm, ΔD being calculated with the following formula: ΔD=D1100° C-5h−D900° C-2h;
the mean size of crystallites being obtained by XRD from the diffraction peak of the cubic phase corresponding to cerium oxide, generally present at 2θ between 28.0° and 30.0°.
Regarding claim 2, copending claim 2 claims the composition consisting of oxides of Ce and Al (composition C1) or consisting of oxides of Ce, Al and La (composition C2).
Regarding claim 5, copending claim 7 claims the proportion of Al2O3 is:
between 65.0 wt % and 95.0 wt % for composition C1; or
between 59.0 wt % and 94.9 wt % for composition C2,
wherein the proportion of Al2O3 falls within the claimed range.
Regarding claim 6, copending claim 8 claims the composition comprising a crystalline phase based on alumina.
Regarding claim 7, copending claim 9 claims the composition comprising a crystalline phase based on cerium oxide.
Regarding claim 8, copending claim 9 claims the crystalline phase based on cerium oxide corresponds to pure CeO2 or to CeO2 containing lanthanum for composition C2.
Regarding claim 19, copending claim 26 claims a BET specific surface area between 80 and 300 m2/g.
Regarding claim 20, copending claim 26 claims a BET specific surface area after calcination in air at 1100° C for 5 hours which is higher than 40 m2/g.
Regarding claim 22, copending claim 26 claims a BET specific surface area after calcination in air at 1200° C for 5 hours which is between 25 m2/g and 60 m2/g.
Regarding claim 23, copending claim 31 claims the composition exhibiting a total pore volume (TPV) which is no more than 2.50 mL/g, the total pore volume being determined by means of the mercury porosimetry technique,
wherein the TPV overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 24, copending claim 31 claims the composition exhibiting a total pore volume (TPV) which is no more than 2.50 mL/g, the total pore volume being determined by means of the mercury porosimetry technique.
Regarding claim 25, copending claim 33 claims the composition exhibiting a bulk density between 0.20 g/cm3 and 0.50 g/cm3,
wherein the bulk density overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 31, copending claim 35 claims the composition having a sodium content of less than or equal to 0.50 wt %, this sodium content being expressed as weight of Na2O relative to the total weight of the composition.
Regarding claim 32, copending claim 35 claims the composition having a sodium content of less than or equal to 0.50 wt %, this sodium content being expressed as weight of Na2O relative to the total weight of the composition,
wherein the sodium content overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 33, copending claim 35 claims the composition having a sulfate content of less than or equal to 1.00 wt %, this sulfate content being expressed as weight of SO4 relative to the total weight of the composition.
Regarding claim 34, copending claim 35 claims the composition having a sulfate content of less than or equal to 1.00 wt %, this sulfate content being expressed as weight of SO4 relative to the total weight of the composition,
wherein the sulfate content overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claims 1-2,5-8,19-25,27-28 and 31-34 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The argument and evidence provided in the Remarks filed on 09/24/2025 overcome the previous 103 rejections of record.
Specifically, at the bottom of page 12 of the Remarks filed 9/24/2025, Applicant points to comparative example 3 of the specification as evidence that variations in the method of producing the composition can result in a product that does not meet the above noted limitations even though the compositional and pore volume characteristics are met. When one compares inventive examples 1-2 of the specification with example 3, it is clear that the methods of production are extremely close. But the compositions produced by examples 1-2 meet all of the limitations of claim 1 whereas example 3 meets all of the limitations except the following features as claimed:
wherein the composition is further characterized by:
- a mean size of crystallites after calcination in air at 1100°C for 5 hours (denoted D1100°C-5h) which is lower than 45.0 nm;
- a mean size of crystallites after calcination in air at 900°C for 2 hours (denoted D000°C-2h) which is lower than 25.0 nm.
Such evidence is sufficient to overcome the prima facie case made in the rejection.
The method of example 3 seems much closer to the inventive method of production than that taught by Sanchez, and thus it would seem logical to conclude from this that if a closer method does not produce a composition with all the recited characteristics, then a further removed method (that of Sanchez) cannot reasonably be expected to produce a composition with all the recited characteristics.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.Z./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732