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 .
Applicant’s election, with traverse, of Group I claims 1-15 directed to a mat material is acknowledged. Applicant argues that the claims appear to be part of an overlapping search area and would require little additional search effort. The three (3) different groups include different inventions and are classified in different classes and sub-classes. The search required for the exhaust gas conversion apparatus is different than the search required for the mat material. Additional search terms and classes/subclasses are required for the exhaust gas apparatus such as metal casing which is not required for the mat material. Additionally, the claims in the present invention lack unity as the claims do not present a contribution over Fukuzawa et al., U.S. Pre Grant Publication 2011/0239602 as disclosed below. The restriction is deemed proper and is made FINAL. Accordingly, claims 16-20 are withdrawn from consideration at this time.
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 2 and 4 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.
Claims 2 and 4 are rendered indefinite because of “i.e.”. the term extends the scope of the claims and does not provide a positive recitation to the claims. For purposes of examination, Examiner is interpreting claim 2 to refer to the weight ratio of the inorganic binder to the mat material is more than 0 wt% and 10 wt% or less. For purposes of examination, Examiner is interpreting claim 4 to refer to the weight ratio of the organic binder to the mat material is more than 0 wt% and 10 wt% or less.
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.
Claims 1-8, 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Furuzawa et al., U.S. Pre Grant Publication 2011/0239602 in view of Kuwano et al., JP 2016-108987.
Regarding claims 1-8, 11,14, Furuzawa discloses a mat including a first principal face, a second principal face opposite to the to the first principal face with entangled points and unentangled points [abstract and 0025]. Paragraph 0091 discloses that the density of the entangled portion is about 0.5 pcs/cm2 to about 30 pcs/cm2. Paragraph 0094 discloses that the unentangled portions and the entangled portions are alternately formed at different positions at least partially. It is disclosed in paragraph 0043 that the mat is impregnated with an organic binder. Also, the abstract discloses that the mat is used in apparatus for purifying exhaust gas.
Furuzawa is silent to the mat including an inorganic binder. Kuwano discloses a layered mat including inorganic fiber [abstract]. It is disclosed in the first paragraph under the drawing description that the mat is used in an exhaust gas purification apparatus. Kuwano discloses that the mat includes an organic binder and an inorganic binder [paragraphs 0014 and 0017]. Paragraph 0018 discloses that inorganic binder is present in an amount of 0.1 to 10% by weight. Paragraph 0015 discloses that the organic binder is present in the amount of less than 2% by weight. Paragraph 0032 under the detailed description discloses that the inorganic and organic binders are aggregated. Also, Kuwano discloses entanglement between the fibers under the detailed description. The detailed description discloses that the inorganic binder and the organic binder adhere to the surface of the inorganic fiber improving the surface pressure [0036]. Paragraph 0045 of Kuwano discloses that inorganic and organic binders have aggregates and are attached to the surface of the fiber and can include flocculant [particulate] Paragraph 0063 discloses a surface pressure. Paragraph 0070 discloses that the binders are attached to surface of the inorganic fibers. Paragraph 0066 of Kuwano discloses an organic polymer such as polyvinyl alcohol [polymeric dispersant]. Furuzawa and Kuwano are analogous art in that both references are directed to a mat material used in an apparatus for exhaust gas purification. Paragraph 0101 of Kuwano discloses sufficient surface pressure while improving wind resistance. One of ordinary skill in the art before the effective filing date would utilize the binder mixture of Kuwano in Furuzawa for the benefit of enhanced wind resistance.
Neither Furuzawa nor Kuwano disclose at least one of a 4 mm X 4 mm first region without the entanglement points or a 3 mm X 8 mm second region without the entanglement points is arranged in a 25 mm X 25 mm region, However, this is an optimizable feature. Furuzawa does disclose in paragraph 0137 that the mat has an area of 100 mm to 10000 mm in length and a width ranging from 100 mm to about 1500 mm. Paragraph 0077 discloses that the unentangled portions have high permeability Therefore, on of ordinary skill in the art before the effective filing date of the invention would include a 3 mm X 8 mm second region without the entanglement points is arranged in a 25 mm X 25 mm region for the benefit of enhanced permeability.
The combination of Furuzawa and Kuwano teach the claimed invention but fails to teach a shear modulus of 0.20 or more and a post-firing surface pressure of 50 kPa. It is reasonable to presume that a shear modulus of 0.20 or more and a post-firing surface pressure of 50 kPa is inherent to the combination of Furuwaza and Kuwano. Said presumption is based on the disclosure of Furuwaza and Kuwano as disclosed above. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 12, the combination of Furuwaza and Kuwano teach the claimed invention but fails to teach wherein the mat material has a shear modulus that is 105% or more of a shear modulus of a mat material with same conditions except that no inorganic binder is contained. It is reasonable to presume that wherein the mat material has a shear modulus that is 105% or more of a shear modulus of a mat material with same conditions except that no inorganic binder is contained is inherent to the combination of Furuwaza and Kuwano. Said presumption is based on the disclosure of Furuwaza and Kuwano as disclosed above. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
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, 3, 5-10 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/842,029 (reference application) [US Pre Grant Publication 20250172085]. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both the present application and the co-pending application recite a mat material comprising inorganic fibers with an inorganic binder and an organic binder attached to the mat material wherein the mat material includes multiple entanglement points on at least the front surface or back surface with the density of the entanglement points is in the range of 0.5 pcs/cm2 ≤ρ<18 pcs/cm2, and at least one of a 4 mm×4 mm first region without the entanglement points or a 3 mm×8 mm second region without the entanglement points is arranged in a 25 mm×25 mm region wherein the mat material has a shear modulus of 0.20 or more as per present claims 1, 3 and 13 and reference claims 1, 10-11 and 14.
The claims in both the present application and the co-pending application recite wherein the inorganic binder and the organic binder are attached in an individually dispersed state to a surface of each inorganic fiber as per present claim 5 and co-pending claim 2.
The claims in both the present application and the co-pending application recite a polymeric dispersion as per instant claim 6 and co-pending claim 3.
The claims in both the present application and the co-pending application recite wherein aggregates of the inorganic binder and the organic binder are attached to a surface of each inorganic fiber as per present claim 7 and co-pending claim 4.
The claims in both the present application and the co-pending application recite wherein the surface of each inorganic fiber is partially covered with a coating layer containing a mixture of the inorganic binder and the organic binder as per instant claim 8 and co-pending claim 5.
The claims in both the present application and the co-pending application recite wherein the coating layer is formed from a continuous flaky mixture of the inorganic binder and the organic binder as per present claim 9 and co-pending claim 9.
The claims in both the present application and the co-pending application recite wherein the coating layer has a stepped shape as per present claim 10 and co-pending claim 10.
The claims in both the present application and the co-pending application recite wherein at least one of the first region or the second region is arranged in a plural number in the 25 mm×25 mm region as per present claim 13 and co-pending claim 12
The claims in both the present application and the co-pending application recite wherein a particulate mixture of the inorganic binder and the organic binder is attached to a surface of the coating layer as per present claim 11 and co-pending claim 8.
The claims in both the present application and the co-pending application recite
The claims in both the present application and the co-pending application recite wherein the mat material is for use in an exhaust gas conversion apparatus as per present claim 14 and reference claim 13.
The claims in both the present application and the co-pending application recite a protective sheet on at least one surface as per present claim 15 and reference claim 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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