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.
Claims 32-33 and 38 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.
In claim 32 it is unclear whether the “C6-C10” refers to the total number of carbon atoms in the aliphatic monoalcohol ether, or whether it refers to the number of carbon atoms in the alcohol residue. In claim 33 it is similarly unclear whether “C12-C30 esters” means that the entire ester contains 12 to 30 carbon atoms, or whether the acid residue contains 12 to 30 carbon atoms.
In claim 38 there is no antecedent basis for “said organic acid”, since claim 34, upon which claim 38 depends, does not recite an organic acid. For the purposes of examination, “said organic acid” is considered to refer to the organic solvent of claim 34, since if claim 38 were dependent on claim 35, which does recite an organic acid, it would fail to further limit claim 35.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 44 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 44 recites a “soot reduction catalyst composition” comprising the cerium composition of claim 23, but since claim 44 does not require any additional components, and claim 23 already requires that the cerium composition be useful as a soot reduction catalyst, claim 44 does not further limit claim 23.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claims 23-24 and 41-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Valentine (U.S. PG Pub. No. 2005/0164139).
In paragraph 16 Valentine discloses adding a fuel borne catalyst to a diesel fuel. In paragraph 27 Valentine discloses that the composition can comprise a fuel soluble cerium composition, and in paragraph 28 Valentine discloses that the cerium compounds can be trivalent cerium carboxylates, where the carboxylate can be a neodecanoate, stearate, or octoate, all meeting the limitations of the long-chain carboxylates of claim 23. Since the cerium compounds are fuel soluble, the diesel fuel meets the limitations of the organic solvent of claim 23. In paragraphs 24 and 27 Valentine discloses that the catalyst also includes a platinum catalyst. The fuel composition of Valentine also meets the limitations of the soot reduction catalyst composition of claim 44, which does not require any components beyond what is required by claim 23.
In paragraph 27 Valentine further discloses that the preferred cerium octoate contains 12% cerium by weight, within the range recited in claim 24.
In paragraph 18 Valentine further discloses that the system of the invention further comprises a diesel particulate filter, and in paragraph 13 Valentine discloses that the system is able to oxidize soot at low exhaust temperatures without a need for frequent cleaning. In paragraph 22 Valentine discloses that the diesel fuel can be a blend of fuels, in which case one fuel meets the limitations of the fuel of claims 41-42 and the other meets the limitations of the organic solvent of claims 41-42. In paragraphs 16 and 18 and the reference’s claim 1, Valentine indicates that a diesel engine is operated with the fuel comprising the catalyst mixture, as recited in claims 41-42. While Valentine does not specifically disclose regenerating the diesel particulate filter at the temperature recited in claims 41-43, since the composition of Valentine meets the limitations of claimed composition, and Valentine teaches that it oxidizes soot at low exhaust temperatures, the method of Valentine will lead to the regeneration of the diesel particulate filter at temperatures meeting the limitations of claims 41 and 43, and also meet the limitations of claim 42 for the case where the optional Ce (III) carboxylates are not present.
In light of the above, claims 23-24 and 41-44 are anticipated by Valentine.
Claims 23, 25, 28-31, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilderson (U.S. Pat. No. 4,474,579).
In column 3 lines 29-31 Wilderson discloses a diesel fuel comprising a mixture of Ce(III)-2-ethylhexanoate and 2-ethylhexanoic acid. Diesel fuel functions as an organic solvent, meeting the limitations of the organic solvent of claim 23. The mixture of Ce(III)-2-ethylhexanoate and 2-ethylhexanoic acid meets the limitations of the cerium composition of claim 23 and the soot reduction catalyst composition of claim 44, since Ce(III)-2-ethylhexanoate meets the limitations of the Ce (III) long-chain carboxylate where RL is a C8 alkyl (ethylhexyl) group.
The Ce(III)-2-ethylhexanoate in the composition of Wilderson also meets the limitations of component (i) of claim 25, while the 2-ethylhexanoic acid meets the limitations of the long-chain conjugate acid of component (iii) of claim 25. The diesel fuel itself functions as an organic solvent, meeting the limitations of component (iv) of claim 25. Claim 25 is therefore anticipated by Wilderson for the case where the optional component (ii) is not present, and claim 30 is also anticipated since it only limits the optional component of claim 25.
In column 2 lines 35-36 and the reference’s claim 7 (“and/or”), Wilderson indicates that the carboxylates and acids can be mixtures, as recited in claim 28. In column 2 lines 65-68 Wilderson discloses that the mole ratio between free carboxylic acid and carboxylate (salt) is from 0.1 to 2, within the range recited in claim 29. Diesel fuel will comprise some C10-C13 alkanes, meeting the limitations of claim 31.
In light of the above, claims 23, 25, 28-31, and 44 are anticipated by Wilderson.
Claims 23-25 and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou (U.S. PG Pub. No. 2009/0013588).
In paragraph 41 (Example 5) Zhou discloses a fuel additive mixture comprising cerium 2-ethylhexanoate (49% in 2-ethylhexanoic acid, 12% Ce). While Zhou does not specifically disclose the oxidation state of the cerium, the 12% cerium content indicates a trivalent cerium salt having three 2-ethylhexanoate residues. The additive mixture of Zhou comprises organic solvents such as mineral spirits and toluene. In paragraph 28 Zhou more broadly discloses solvents, such as mineral oil. The fuel additive composition of Zhou therefore meets the limitations of claim 23, as well as claim 44, which does not require any additional components, and claims 25 and 30, where the 2-ethylhexanoic acid is the long-chain carboxylic acid component (iii), and the carboxylate (ii) is not present.
The additive mixture in paragraph 41 of Zhou comprises about 20 g (12% of 167 g) of cerium. The total weight of the additive mixture is about 1518 g (500 ml toluene = about 431 g). The cerium content of the additive mixture is therefore about 1.3%, within the range recited in claim 24.
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.
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 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Wilderson in view of Sondjaja (U.S. 2014/0033605).
The discussion of Wilderson in paragraph 9 above is incorporated here by reference. Wilderson discloses a cerium composition meeting the limitations of claim 23, including a diesel fuel. In column 3 lines 3-17 Wilderson discloses that the diesel fuel can be based on natural oils. Wilderson does not specifically disclose the inclusion of the solvents of claims 32-33 in the cerium composition.
In paragraphs 20-24 and 114 Sondjaja discloses a fuel additive composition. In paragraphs 90-91 Sondjaja discloses that the composition can comprise a solvent, and that suitable solvents include ethylene glycol monobutyl ether and diethylene glycol mono-n-butyl ether, which are aliphatic monoalcohol ethers containing 6 and 8 carbon atoms respectively, meeting the limitations of the solvent of claim 32. In paragraph 98-99 Sondjaja discloses that the fuel additive compositions are useful in fuel composition predominantly comprising a biodiesel, and in paragraphs 105-108 Sondjaja discloses that the biodiesel is preferably methyl esters of fatty acids having 12 to 24 carbon atoms, meeting the limitations of the solvent of claim 33.
The inclusion of the cerium-based additives of Wilderson in the additive composition of Sondjaja, where ethylene glycol monobutyl ether and diethylene glycol mono-n-butyl ether, meets the limitations of claim 32. The use of the biodiesel of Sondjaja as the diesel fuel of Wilderson meets the limitations of claim 33 for the case where the biodiesel is the organic solvent, whether the cerium-based additive of Wilderson is added directly to the biodiesel or first incorporated into an additive composition of Sondjaja.
It would have been obvious to one of ordinary skill in the art to include the cerium-based additives of Wilderson in the additive composition of Sondjaja, where ethylene glycol monobutyl ether and diethylene glycol mono-n-butyl ether, since Sondjaja teaches that additives for a biodiesel fuel can be formed into an additive composition using those solvents prior to incorporation into the fuel. It would have been obvious to one of ordinary skill in the art to use the biodiesel of Sondjaja as the natural oil-based diesel of Wilderson, since Sondjaja teaches that they are suitable natural oil-derived esters for use as diesel fuels.
Claims 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou in view of Sondjaja (U.S. 2014/0033605).
The discussion of Zhou in paragraph 10 above is incorporated here by reference. Zhou discloses a fuel additive composition cerium composition meeting the limitations of claim 23, including a solvent. Zhou discloses in paragraph 26 that the fuel can be a diesel fuel or biodiesel. Zhou does not disclose the specific solvents of claims 32-33.
In paragraphs 20-24 and 114 Sondjaja discloses a fuel additive composition. In paragraphs 90-91 Sondjaja discloses that the composition can comprise a solvent, and that suitable solvents include ethylene glycol monobutyl ether and diethylene glycol mono-n-butyl ether, which are aliphatic monoalcohol ethers containing 6 and 8 carbon atoms respectively, meeting the limitations of the solvent of claim 32. In paragraph 98-99 Sondjaja discloses that the fuel additive compositions are useful in fuel composition predominantly comprising a biodiesel, and in paragraphs 105-108 Sondjaja discloses that the biodiesel is preferably methyl esters of fatty acids having 12 to 24 carbon atoms, meeting the limitations of the solvent of claim 33.
The inclusion of the additives of Zhou in the additive composition of Sondjaja, where ethylene glycol monobutyl ether and diethylene glycol mono-n-butyl ether, meets the limitations of claim 32. The use of the biodiesel of Sondjaja as the biodiesel of Zhou meets the limitations of claim 33 for the case where the biodiesel is the organic solvent, whether the additive composition of Zhou is added directly to the biodiesel or first incorporated into an additive composition of Sondjaja.
It would have been obvious to one of ordinary skill in the art to include the cerium-based additives of Zhou in the additive composition of Sondjaja, where ethylene glycol monobutyl ether and diethylene glycol mono-n-butyl ether, since Sondjaja teaches that additives for a biodiesel fuel can be formed into an additive composition using those solvents prior to incorporation into the fuel. It would have been obvious to one of ordinary skill in the art to use the methyl ester biodiesel of Sondjaja as the biodiesel of Zhou, since Sondjaja teaches that they are suitable compounds for use as biodiesel.
Claims 34 and 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Gamlen Europe (GB 1571210) in view of Chane-Ching (CA 2391946 C).
Gamlen Europe discloses on page 1 lines 17-26 a method of preparing cerium salts where a cerium hydroxide is reacted with a long-chain carboxylic acid having at least 8 carbon atoms, and the cerium is a trivalent cerium, as recited in step (a) of claim 34. In the example on page 2 lines 62-76 Gamlen Europe discloses that white spirit, an organic solvent as recited in step (b) of claim 34, is added to the reaction mixture following the reaction. In the example Gamlen Europe discloses performing the reaction at 80° C, within the range recited in claim 37. Gamlen Europe also discloses in the example carrying out the reaction in the presence of white spirit, meeting the limitations of claim 38 under the interpretation set forth in paragraph 3 above. Gamlen Europe does not specifically disclose carrying out the reaction under a non-oxidative atmosphere.
An English-language machine translation of Chane-Ching, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the machine translation. In paragraph 4 Chane-Ching discloses a reaction of a cerium (III) salt, and that it can be carried out under a nitrogen atmosphere, which is a non-oxidative atmosphere as recited in claim 34. In paragraph 5 Chane-Ching further discloses that the products can be additionally processed, and the atmosphere plays a role in the transformation of cerium (III) into cerium (IV).
It therefore would have been obvious to one of ordinary skill in the art to perform the reaction of Gamlen Europe under a non-oxidative atmosphere, such as the nitrogen atmosphere of Chane-Ching, in order to limit the oxidation of cerium (III) into cerium (IV), since Gamlen Europe desires a trivalent cerium salt.
Allowable Subject Matter
Claims 26-27, 35-36, and 39-40 are 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 claims 26-27, the prior art, as exemplified by the references discussed above does not disclose or render obvious further including a cerium (III) carboxylate of a C2-C5 carboxylic acid in the claimed composition, where the components are present in the claimed amounts. Wilderson, as discussed in paragraph 9 above, discloses that a mixture of acids can be used to prepare the cerium carboxylate, where the acids can have as few as 4 carbon atoms, but does not provide motivation for one of ordinary skill in the art to specifically combine a long-chain carboxylic acid and a C4 or C5 carboxylic acid to produce carboxylates in the relative amounts recited in claims 26-27.
Similarly, the prior art does not disclose or render obvious carrying out the reaction of the cerium (III) precursor with a long-chain carboxylic acid in the presence of a C2-C5 carboxylic acid, as required in claim 35. The Gamlen Europe reference requires the carboxylic acid reactant to comprise at least 8 carbon atoms. Wilderson, in column 2 lines 46-57, discloses a different synthetic route to the cerium(III) carboxylates than recited in the claims, and does not specifically disclose a mixture of a long-chain carboxylic acid reaction and a shorter-chain carboxylic acid reactant.
Regarding claim 36, Gamlen Europe discloses on page 1 lines 33-44 that the ratio of acid molecules to cerium atoms in the reaction ranges from 0.2 to 1. Since the products of Gamlen Europe have an acid residue to cerium ratio of 3, Gamlen Europe therefore requires the cerium(III) reactant to be present in stoichiometric excess, contrary to the requirements of claim 36.
Regarding claim 39, Gamlen Europe does not disclose or render obvious adding solvent at the temperature recited in claim 39. The examples of Gamlen Europe disclose performing the reaction at a temperature lower than the range recited in claim 39; one of ordinary skill in the art would have no motivation to raise the temperature after the completion of the reaction.
Regarding claim 40, Gamlen Europe discloses that the reaction is carried out in the presence of an organic medium, and that a separated aqueous phase is eliminated before the addition of additional solvent. In the examples Gamlen Europe indicates that the organic medium can be white spirit, as is the solvent added later. There is no indication in Gamlen Europe that the product is filtered prior to addition of organic solvent, and no motivation to do so.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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