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 .
Response to Amendment
Amendment to claims filed 2-13-26 is acknowledged. Currently, claims 1-20 are pending. Claims 1-3, 13 and 18 are currently amended.
Terminal Disclaimer
The terminal disclaimed filed 2-13-26 is disapproved. At the top of the terminal disclaimer form where the word “FOR” is should have the title of the invention. No additional fee is required with the resubmission.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 7, the prior art does not teach wherein an overall volume weighted particle size distribution of the abrasive grit particles is substantially the same as an overall volume weighted particle size distribution of a hardest component or a second hardest component of the ceramic-forming mixture.
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, 6, 17-20 ae rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 10-12 of U.S. Patent No. 12151397. Although the claims at issue are not identical, they are not patentably distinct from each other because both recite a method of conditioning a honeycomb extrusion die wherein a particle size distribution of the abrasive grit particles corresponds to a particle size distribution of at least one type of inorganic ceramic-forming particles int eh ceramic-forming mixture, the at least one type of inorganic ceramic-forming particles comprising first abrasive particles comprising a first particle size distribution comprising a first peak in a volume percentage of the first abrasive particles at a first particle diameter, and second abrasive particles comprising a second particle size distribution comprising a second peak in a volume percentage of the second abrasive particles at a second particle diameter, and the volume percentage of the second abrasive particles at the second peak of the second particle size distribution is within about 20% of the volume percentage of the first abrasive particles at the first peak of the first particle size distribution. Therefore, claim 1 of US 12151397 anticipates the claimed invention.
Claims 2-5, 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12151397 in view of Miwa et al. (EP0389253).
Regarding claim 2, Miwa et al. teaches that it is preferable that the ceramic material used for adjusting flow resistance is the same as the ceramic material actually extruded to form ceramic honeycomb structures. The reason is that the flow resistance can be adjusted to meet the requirements for the actual extruding (col. 6, line 46-68). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the inorganic ceramic-forming particles as the abrasive grit particles. It would have been obvious to optimize the maximum particle size of the abrasive grit particles to be less than or equal to 80% of the smallest aperture of the honeycomb extrusion die in order to optimize the extrusion conditions.
Regarding claim 3, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the volumetric solids loading of the abrasive flow media is less than or equal to the volumetric solids loading of the ceramic-forming mixture since Miwa et al. teaches they are the same materials.
Regarding claim 4 and 8, Miwa et al. teaches that it is preferable that the ceramic material used for adjusting flow resistance is the same as the ceramic material actually extruded to form ceramic honeycomb structures. The reason is that the flow resistance can be adjusted to meet the requirements for the actual extruding (col. 6, line 46-68). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to match the rheological flow catachrestic of the abrasive flow media in order to optimize the flow resistance.
Regarding claim 5, Miwa et al. teaches wherein the abrasive grit particles comprise a same composition as the at least one type of inorganic ceramic-forming particles in the ceramic-forming mixture (col. 6, line 46-68).
Regarding claim 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the particle diameter of the abrasive grit particles to be less than or equal to 80% of a smallest aperture dimension in the honeycomb extrusion die since Miwa et al. teaches the dimensions of the material feed holes 2 is a result effective variable (col. 4, line 24-57).
Regarding claim 10, Miwa et al. teaches wherein the unconditioned surfaces of the honeycomb extrusion die are uncoated surfaces, and the uncoated surfaces are exposed to the abrasive flow media for a first duration effective to change a geometry of the uncoated surfaces, to deburr the uncoated surfaces, or combinations thereof (col. 5, line 36-58).
Regarding claim 11, Miwa et al. teaches coating the uncoated surfaces after the first duration to form coated surfaces and exposing the coated surfaces to the abrasive flow media for a second duration effective to smooth the coated surfaces, to create flow grooves in the coated surfaces, or combinations thereof (see fig. 1).
Regarding claim 12, Miwa et al. teaches wherein the unconditioned surfaces of the honeycomb extrusion die are coated surfaces, and the coated surfaces are exposed to the abrasive flow media for a duration effective to smooth the coated surfaces, to create flow grooves in the coated surfaces, or combinations thereof (see fig. 1).
Regarding claim 13, Miwa et al. teaches wherein the coated surfaces of the honeycomb extrusion die comprise a titanium carbonitride coating or a boron-doped titanium carbonitride coating (col. 7, line 32-col. 8, line 3).
Regarding claim 14, Miwa et al. teaches wherein the exposing the unconditioned surfaces of the honeycomb extrusion die to the abrasive flow media is conducted in equipment off-line from a manufacturing extrusion line (see fig. 1-6).
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12151397 in view of Miwa et al. (EP0389253) and Brew et al. (US 11,752,679).
Regarding claim 15, Miwa et al. teaches that when the ceramic honeycombed structures are made of cordierite, the flow resistance is adjusted with a cordierite material (col. 6, line 46-68). Miwa et al. does not teach wherein the abrasive grit particles comprise alumina, quartz, or combinations thereof. However, Brew et al. teaches that the honeycomb structure can be formed from a ceramic-forming batch composition. The ceramic may be, for example alumina and combinations (col. 3, line 19-34). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select alumina as the abrasive grit particles since Brew et al. teaches that alumina is a suitable material for forming honeycomb structures.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12151397 in view of Rector et al. (2011/0049743).
Regarding claim 16, Rector et al. teaches that compositions comprising carrier mixtures of siloxane polymers and aliphatic hydrocarbon lubricants filled with carbide grit abrasives can be formulated to offer consistent chemistry and physical uniformity, providing theological properties that are generally affected only by temperature. If desired, such compositions can be formulated to provide flow characteristics very similar to those of extrudable mixtures of ceramic forming materials, making them well suited for sue to generate die flow front profiles for beam scanning, as well as for abrasive machining (para 38). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a polyorganosiloxane-based polymer as the flowable carrier since Rector et al. teaches that siloxane polymer is suitable as a carrier material.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XUE H LIU whose telephone number is (571)270-5522. The examiner can normally be reached 1PM - 10PM.
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/X.H.L/Examiner, Art Unit 1742 /CHRISTINA A JOHNSON/Supervisory Patent Examiner, Art Unit 1742