DETAILED ACTIONNotice 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 .
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 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18256412 (reference application), herein known as ‘412. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 6 of ‘412 meet all the limitations of claims 1 and 8 of the instant application.
Claim 1 corresponds to Claims 1 and 6 of ‘412 (Claim 1 of ‘412, Wall-flow filter for removing particles from the exhaust gas of combustion engines, comprising a wall-flow filter substrate of length L and coating.. F… wherein the wall-flow filter substrate has channels E and A, which extend in parallel between a first and a second end of the wall-flow filter substrate, are separated by porous walls and form 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 coating F is located mainly on the surfaces OE but not on the surfaces OA, and comprises a membrane and no noble metal; Claim 6 of ‘412, the membrane of the coating F contains a particulate oxide of an element selected from the group consisting of… cerium, yttrium, praseodymium… or a mixture of two or more of said oxides). The language after “preferably” is not considered as further limiting. See 112(b) rejection below.
Claim 8 corresponds to Claim 6 of ‘412 (Claim 1 of ‘412, the coating Z is located in the porous walls and/or on the surfaces OA, but not on the surfaces OE and comprises palladium and/or rhodium and a cerium/zirconium mixed oxide; Claim 6 as above).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Given that the application has been allowed, this rejection will convert to a non-provisional rejection upon issuance of the patent.
Claim Objections
Claims 1 and 13 are objected to because of the following informalities:
In Claim 1, “and channels E being closed” should read “and the channels E being closed”.
In Claim 1, “and channels A being closed” should read “and the channels A being closed”.
In Claim 1, “a greater amount of coating F” should read “a greater amount of the coating F”.
In Claim 1, both instances of “located in the vicinity of” should read “located near”.
In Claim 13, “the rare earth metal oxide is” should read “the one or more rare earth metal oxides are”.
Appropriate correction is required.
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 1 and 7-17 are 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.
Claim 1 recites the limitation “preferably a greater amount of coating F…”. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 7-17 are rejected due to their dependence on the rejected claim 1.
Claim 16 recites the limitation “the dry wall-flow filter substrate” in line 3. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, “the dry wall-flow filter substrate” is interpreted as the wall-flow filter substrate of claim 1.
Claim 16 recites the limitation “the powder” in line 3. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, “the powder” is interpreted as the “dry powder-gas aerosol” in line 2.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 17 is rejected under 35 U.S.C. 101/112(b) for reciting a "use" claim without setting forth the steps involved in its use (See MPEP 2173.05(q)). The claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter. Further, Claim 17 does not positively recite any active process steps.
For purposes of compact prosecution, Claim 17 is treated as being drawn to "A method of reducing harmful exhaust gases of an internal combustion engine, comprising passing the harmful exhaust gases of the internal combustion engine through a wall-flow filter according to claim 1."
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7-15 and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Schoenhaber et al. (US 2024/0033687 A1).
With regard to Claims 1 and 8, Schoenhaber teaches a wall-flow filter for removing particles from the exhaust gas of internal combustion engines, comprising a wall-flow filter substrate of length L and different coatings Z and F, the wall-flow filter substrate having channels E and A, which extend in parallel between a first and a second end of the wall-flow filter substrate, are separated by porous walls and form surfaces OE and OA respectively, and the channels E being closed at the second end and the channels A being closed at the first end (Abstract).
Schoenhaber teaches the coating F being located in the porous walls and/or on the surfaces OE, but not on the surfaces OA, and comprising a membrane and no noble metal (Paragraphs 0051-0052), wherein the membrane comprises a particular metal compound, wherein the particulate metal compound is a mixed oxide containing cerium and praseodymium (Paragraph 0052; a mixture of two or more of said oxides).
Schoenhaber teaches a larger amount of coating F preferably located near the second end of the wall-flow filter substrate and a significantly smaller amount of coating F located near the first end of the wall-flow filter substrate (Paragraph 0066).
Schoenhaber teaches a coating Z which is located in the porous walls and/or on the surfaces OA but not on the surfaces OE, and contains palladium and/or rhodium and a cerium/zirconium mixed oxide (Abstract).
With regard to Claim 7, Schoenhaber teaches an increasing concentration gradient of the coating F in the longitudinal direction of the filter from its first to its second end (Paragraph 0064).
With regard to Claims 9 and 10, Schoenhaber teaches the coating Z located on the surfaces OA of the wall-flow filter substrate and extending from the second end of the wall-flow filter substrate to 50 to 90% of the length L (Paragraph 0020), and the coating Z located in the porous walls of the wall-flow filter substrate and extending from the first end of the wall-flow filter substrate to 50 to 100% of the length L (Paragraph 0023).
With regard to Claim 11, Schoenhaber teaches the coating Z containing palladium and rhodium and no platinum (Paragraph 0029).
With regard to Claims 12-15, Schoenhaber teaches the coating Z comprising lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and a cerium/zirconium/rare earth metal mixed oxide containing yttrium oxide and lanthanum oxide or praseodymium oxide and lanthanum oxide as rare earth metal oxides (Paragraphs 0046-0047).
With regard to Claim 17, Schoenhaber teaches the use of a wall-flow filter according to the invention for reducing harmful exhaust gases of an internal combustion engine (Paragraph 0134).
The applied reference has a common assignee (Umicore) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
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.
Claims 1, 8-9, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over Foerster et al. (WO 2020/094760 A1, corresponding translation from US 2021/0396167 A1) in view of Miura et al. (US 2023/0277986 A1).
With regard to Claims 1 and 8, Foerster teaches a wall-flow filter for removing particles from the exhaust gas of internal combustion engines, comprising a wall-flow filter substrate of length L and coatings Y and Z, the wall-flow filter substrate having channels E and A, which extend in parallel between a first and a second end of the wall-flow filter substrate, are separated by porous walls and form surfaces OE and OA respectively, and the channels E being closed at the second end and the channels A being closed at the first end (Paragraph 0014).
Foerster teaches the coating Y being located in the porous walls and/or on the surfaces OE, but not on the surfaces OA, and a coating Z which is located in the porous walls and/or on the surfaces OA but not on the surfaces OE (Fig. 2).
Foerster teaches the coatings Y and Z comprising a cerium/zirconium/rare earth metal mixed oxide as an oxygen storage component, wherein the rare earth metal mixed oxide includes praseodymium oxide (Paragraph 0024), and palladium and rhodium noble metals (Paragraph 0022).
Foerster is therefore silent to the coating Y containing no noble metal.
Miura, in an exhaust gas purification catalyst, teaches an upper layer coating that does not contain a noble metal, to improve the catalyst performance for NOx impurities (Paragraph 0045).
It would have been obvious to one of ordinary skill in the art for Foerster to teach the coating Y containing no noble metal, as taught in Miura, to improve the exhaust gas catalyst performance for NOx impurities.
With regard to Claim 9, Foerster teaches the coating Z located on the surfaces OA of the wall-flow filter substrate and extends from the second end of the wall-flow filter substrate to between 60 to 80% of the length L (Paragraph 0017).
With regard to Claims 11-15, Foerster teaches the coating Z comprising lanthanum-stabilized aluminum oxide, rhodium, palladium or palladium and rhodium, and a cerium/zirconium/rare earth metal mixed oxide containing yttrium oxide and lanthanum oxide or praseodymium oxide and lanthanum oxide as rare earth metal oxides (Paragraph 0026).
With regard to Claim 16, Foerster teaches a method for producing a wall-flow filter wherein a dry powder-gas aerosol is applied to the inlet region E of the wall-flow filter substrate containing particulate metal compounds which improve catalytic activity and degree of filtration efficiency (Abstract; Paragraph 0014).
With regard to Claim 17, Foerster teaches the use of a wall-flow filter according to the invention for reducing harmful exhaust gases of an internal combustion engine (Paragraph 0058).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Jiang (US 2008/0138273 A1) discloses a wall flow reactor for hydrogen production with catalyst coatings applied on the channel surfaces. The coating material does not comprise a mixed oxide comprising cerium and one of manganese and praseodymium.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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/A.Y.S./Examiner, Art Unit 1736
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
