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 .
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.
Claim 8 is 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. In this case, claim 8 recites “an upside of the second catalyst layer”, this term is a relative term because the basisi or position for “upside” is relative but such basis in the instant application appears lacking, therefore, one of ordinary skill in the art is uncertain what side of second catalyst layer can be considered as “upside”. Therefore, such limitation renders claim indefiniteness. For broadest reasonable interpretation, any side of the second catalyst layer can be considered as “upside”.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as obvious over Matsumura et al (JP2017/006905) (for applicant’s convenience, machine translation provided by applicant has been used for citations hereof).
Matsumura et al teaches an exhaust gas purification catalyst comprising an Rh-containing catalyst layer (item 3, Fig. 1) on a substrate (item 1 Fig. 1-2) which contains Rh as catalytic metal and CeZr composite oxide (item 9, Fig. 1, example 1-11, table 1 and 3, claim 1-7).
Regarding claim 1, as for the claimed “a”/”b”, Matsumura et al. further teaches 23 wt.% (or 10 wt. %) of CeO2 containing binder, a composite oxide of CeZrNdLaYOx being used as carrier, 10% of Y2O3 (or 5 wt. %) contained in such composite oxide (table 1), and also a cerium free binder particle of ZrLaYOx being used as carrier which has 10 wt.% of Y2O3 (table 1-2,example 1-11). Matsumura et al. also teaches the cerium containing composite can be contained more than 75% by weight (Fig. 2, para. [0070]). Base on such teachings, Matsumura et al. disclosed molar amount Ce in the Rh catalyst layer as divided by the molar amount Y in the Rh catalyst layer being within or overlapping with that of instantly claimed “a”/”b” thus render a prima facie case of obviousness (see MPEP §2144. 05 I). It would have been obvious for one of ordinary skill in the art to adopt a same “a”/”b” in such Rh catalyst layer via routine experimentation (see MPEP §2144. 05 II) for help obtaining an exhaust gas catalyst with desired performance.
Regarding claim 2-5, Matsumura et al. already teaches such limitations as discussed above.
Regarding claim 6, Matsumura et al. also teaches the Rh containing layer having certain weight percentage of Rh (table 1, 3), such teachings suggest a ratio of Rh molar amount/Y molar amount being within or overlapping with that of instantly claimed “c”/”b” thus render a prima facie case of obviousness (see MPEP §2144. 05 I). It would have been obvious for one of ordinary skill in the art to adopt a same “c”/”b” in such Rh catalyst layer via routine experimentation (see MPEP §2144. 05 II) for help obtaining an exhaust gas catalyst with desired catalytic performance.
Regarding claim 7 and 9, Matsumura et al. also teaches the catalyst containing a second catalyst layer which can comprise Pd (item 2, Fig. 1, claim 8, example 1-11).
Regarding claim 8, Matsumura et al. also teaches there is an upstream catalyst layer (item 31, Fig. 2) provided on an upside of the Rh catalyst layer (item 32 of Fig. 2, para. [0065]-[0071], example 7-11).
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.
Claim 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of co-pending application S/N 18/699827 in view of Matsumura et al (JP2017/006905). Co-pending application’827 teaches a substantially the same catalyst comprising a Rh layer and a Pd layer, but does not teach the “a”/”b” ratio or “c”/”b” ratio in the Rh layer, but such limitations have been taught by Matsumura et al as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well known “a”/”b” ratio and “c”/”b” ratio in such Rh catalyst layer as shown by Matsumura et al to modify a well-known exhaust gas catalyst for improvement would have predictable results (see MPEP §2143 KSR).
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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