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 1 is presently pending in this application.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicants’ Priority Document was electronically retrieved on April 22, 2024.
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.
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Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/616,675 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the respective claims are both drawn to electrically heated catalyst devices comprising a substrate, an inflow side catalyst layer containing Pd as a catalyst component, an outflow side catalyst layer containing Rh as a catalyst component, and a substrate containing SiC. However, the respective claims differ in that the electrically heated catalyst device recited in the copending ‘675 application exhibits (a) an inflow side catalyst region extends from an inflow side end of the partition wall along the extending direction to an outflow side by a distance of more than 50% of the total length in the extending direction of the partition wall, (b) an outflow side catalyst region extends from an outflow side end of the partition wall along the extending direction to an inflow side by a distance of more than 50% of the total length in the extending direction of the partition wall, and (c) a total coat amount obtained by dividing a total mass of the inflow side catalyst layer and the outflow side catalyst layer by a volume of the substrate is 138 g/L or more and 150 g/L or less.
In instant claim 1, (a) the inflow side catalyst region extends from an inflow side end of the partition wall along the extending direction to an outflow side by a distance of 60 to 90% of the total length in the extending direction of the partition wall, and (b) the outflow side catalyst region extends from an outflow side end of the partition wall along the extending direction to an inflow side by a distance of 60 to 90% of the total length in the extending direction of the partition wall.
Because the respectively claimed electrically heated catalyst devices (i) comprise the same components and (ii) exhibit comparable inflow side catalyst regions and outflow side catalyst regions, the skilled artisan would reasonably expect the electrically heated catalyst device claimed in the instant application to comparably exhibit a total coat amount obtained by dividing a total mass of the inflow side catalyst layer and the outflow side catalyst layer by a volume of the substrate comparable to that recited in the copending ‘675 application, absent the showing of convincing evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. (CN 208057201, Applicants’ submitted art; English translation provided and relied upon).
Regarding claim 1, Dong et al. teach a two-layer three-way catalyst (TWC) comprising a substrate having an axial length, formed as a flow-through carrier having multiple channels extending longitudinally and providing multiple internal surfaces defining the walls of each channel (“partition wall...plurality of cells extending from an inflow side end surface to an outflow side end surface"), and comprising silicon carbide, an inlet catalyst layer comprising palladium and extending from 50% to 99% of the axial length, and an outlet catalyst layer comprising rhodium and extending from 50% to 99% of the axial length, wherein the outlet catalyst layer overlaps the inlet catalyst layer by 5% to 90% of the axial length. See Figures 1 and 2 and paragraphs [0015], [0016], [0018], [0021], [0036], [0037], [0058], [0082], [0085], and [0088] of Dong et al.
Dong et al. do not explicitly teach, suggest, or define the aforementioned three-way catalyst as an “electrically heated catalyst device”, as recited in Applicants’ claim 1. However, because the three-way catalyst disclosed in Dong et al. structurally reads upon that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the three-way catalyst disclosed in Dong et al. to effectively and successfully function as an electrically heated catalyst device, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01 (I and II).
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Boorse et al. (U. S. Patent Publication No. 2011/0271664).
Regarding claim 1, Boorse et al. teach a catalytic article comprising a substrate, wherein the substrate may comprise silicon carbide, a first catalyst coating extending from the outlet end of the substrate toward the inlet end of the substrate and over less than the entire axial length L of the substrate (“outflow side catalyst layer”), and a second catalyst coating extending from the inlet end of the substrate and toward the outlet end of the substrate and over less than the entire axial length L of the substrate (“inflow side catalyst layer”). See Figure 1 and paragraphs [0027], [0032], and [0036] of Boorse et al.
Note that Figure 1 of Boorse et al. also shows (i) the second catalyst coating (“inflow side catalyst layer”) disposed on the substrate (“surface of the partition wall”) in an inflow side catalyst region, and (ii) the first catalyst coating (“outflow side catalyst layer”) disposed on the substrate (“outflow side catalyst layer disposed on a surface of the partition wall”; surface of the partition wall is in a portion not overlapping with the inflow side catalyst region”), with a portion of the first catalyst coating additionally in contact with the second catalyst coating (“outflow side catalyst layer is disposed on a surface of the partition wall and a surface of the inflow side catalyst layer in an outflow side catalyst region”).
Boorse et al. further teach the feasibility in the substrate having a plurality of fine, parallel gas flow passages extending from an inlet to an outlet face of the substrate, such that passages are open to fluid flow, said passages being defined by walls on which the catalytic material is coated as a washcoat, so that the gases flowing through the passages contact the catalytic material ("substrate includes a partition wall defining a plurality of cells"). See paragraph [0032] of Boorse et al.
The first catalyst coating and second catalyst coating overlap to form three zones, wherein each of the three zones individually occupy in the range of about 10 to about 80% of the axial length of the substrate. In specific embodiments, each of the three zones occupy 1/3 (i.e., 66.67%) of the axial length of the substrate. See paragraphs [0030] and [0031] of Boorse et al. From this teaching, the skilled artisan would readily envision (a) the first catalyst coating (“outflow side catalyst layer”) extending from an outflow side of the end of the partition wall along the extending direction to an inflow side by a distance of 60% to 90% of the total length in the extending direction of the partition wall and (b) the second catalyst coating (“inflow side catalyst layer”) extending from an inflow side of the end of the partition wall along the extending direction to an outflow side by a distance of 60% to 90% of the total length in the extending direction of the partition wall, as recited in Applicants’ claim 1.
As stated above, the first and second catalyst coatings overlap to form three zones, the first for removing NOx by selective catalytic reduction (SCR), the second for oxidizing ammonia, and the third for oxidizing carbon monoxide and hydrocarbons. The first catalyst coating (“outflow side catalyst layer”) includes a platinum group metal, examples of which include rhodium (“outflow side catalyst layer includes Rh as a catalyst component”); the second catalyst coating (“inflow side catalyst layer”) includes a catalyst for the selective catalytic reduction of nitrogen oxides. Boorse et al. teach metals from, inter alia, group VIIIB (e.g., rhodium and palladium), as exemplary SCR components, and additionally teach rhodium and palladium as exemplary ammonia oxidation components. See paragraphs [0027], [0028] [0040], [0041], and [0048] of Boorse et al. From these teachings, the skilled artisan would have been motivated to select (a) palladium as a second catalyst coating component (“inflow side catalyst layer contains Pd”) and (b) rhodium as a first catalyst coating component (“outflow side catalyst layer contains Rh”).
Boorse et al. do not explicitly teach, suggest, or define the aforementioned catalytic article as an “electrically heated catalyst device”, as recited in Applicants’ claim 1. However, because the catalytic article disclosed in Boorse et al. structurally reads upon that instantly claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicants’ invention to reasonably expect the catalytic article disclosed in Boorse et al. to effectively and successfully function as an electrically heated catalyst device, absent the showing of convincing evidence to the contrary.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). See also MPEP 2112.01 (I and II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICIA L HAILEY whose telephone number is (571)272-1369. The examiner can normally be reached Monday-Friday, 7 a.m. to 3:30 p.m.
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/Patricia L. Hailey/Primary Examiner, Art Unit 1732 July 7, 2026
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