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 .
Election/Restrictions
Claims 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/16/26.
Applicant's election with traverse of Group I (claims 1-10) in the reply filed on 1/16/26 is acknowledged. The traversal is on the ground(s) that “a thorough and complete search for the subject matter of the elected claims would necessarily encompass a thorough and complete search for the subject matter of the non-elected claims. Thus, it is respectfully submitted that search and examination of the entire application could be made without serious burden.” This is not found persuasive because as stated in the 12/29/25 Requirement for Restriction, there would be a serious burden and / or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Further a serious burden exists in the differing issues likely to arise during the prosecution of the different inventions and / or species.
The requirement is still deemed proper and is therefore made FINAL.
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 7 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.
Claim 7 recites the limitation "has a surface facing the part to which coating material is applied in the portion of the side surface near the first end surface and the potion of the side surface near the second end surface.". There is insufficient antecedent basis for this limitation in the claim. Claim 7 depends from claim 2 which recites the closest basis for the above limitation as: “the coating material is further applied to at least a part of one or both of a portion of the side surface near the first end surface and a portion of the side surface near the second end surface of the ceramic…”. The recitation of claim 2 specifically recites “at least a part of one or both…first end…and… the second end” which allows for species such as part of the first end, part of the second end, or both part of the first end and part of the second end; while the limitation in claim 7 does not make this distinction therefor it is indefinite as to if the limitation of claim 7 is intending to reference the genus of 3 species recited in parent claim 2, or if it is intending to require the “both” species therein. For purposes of examination the limitation will be interpreted as at least inclusive of either such scenario.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirao et al (JP 2011-25313; citations directed to machine translation provided herein, hereafter Hirao).
Claim 1: Hirao teaches a method for producing a coated ceramic (such as bonding agent (2) / (13) on ceramic) (See, for example, abstract, pg 1-2) comprising:
a step A of preparing a pillar-shaped ceramic (such as 1, 12, 21) having a first end surface (such as portion of intended mating surface), a second end surface (such as surface on opposite end of ceramic article, or alternatively a different portion of the intended mating surface), and a side surface (such as another portion of the intended mating surface and bridging surface, opposing surface to the mating surface and bridging surface, or portion of the surface bridging the two) (see, for example, Figure 5, 7, 8, 10, and supporting text),
wherein a coating material (bonding agent / glass 2, 13, 22) is applied to at least a part of one or both of the first end surface and the second end surface (see, for example, Figure 5, 7, 8, 10, and supporting text);
a step B of preparing an assembly in which the ceramic and at least one heat-generating member(6, 17, 24 or components such as individual silicon carbide abrasive grains therein) are entirely covered with a heat-insulating material (8, 18, 23, 3, 14, 5, 16, 9, 26 (taken individually or collectively per the embodiment))
and the heat-insulating material is in contact with the side surface and surrounds the side surface (see, for example, Figure 5, 7, 8, 10, and supporting text, such as 23 of Fig 8);
on a condition that the at least one heat-generating member is disposed facing one or both of the first end surface and the second end surface to which the coating material is applied (see, for example, Figure 5, 7, 8, 10, and supporting text, the self healing elements are explicitly taught as comprising loose SIC abrasive grains (1mm in diameter), interpreting the at least one heat-generating member as a singular SIC abrasive grain positioned at the top of the stack of SIC abrasive grains and adjacent to the article (upper 2) intended to be mated with the ceramic (lower 2), the outer surface of the grain in the direction of the first end surface would face said surface).
and a step C of firing the coating material applied to at least the part of one or both of the first end surface and the second end surface end surface facing the at least one heat-generating member by generating heat from the at least one heat-generating member of the assembly (see, for example, abstract, pg 1-2, Figure 5, 7, 8, 10, and supporting text).
Claim 2: Hirao further teaches wherein the coating material is further applied to at least a part of one or both of a portion of the side surface near the first end surface and a portion of the side surface near the second end surface of the ceramic prepared in the step A (see, for example, wherein the portion of the side surface is interpreted as at least inclusive of a portion of the mating surface) (see, for example, abstract, Figure 5, 7, 8, 10, and supporting text).
Claim 3: Hirao further teaches wherein the insulating material in the assembly prepared in the step B does not come into contact with the part to which the coating material is applied in the portion of the side surface near the first end surface and the portion of the side surface near the second end surface (see, for example, Figure 5, 7, 8, 10, and supporting text; and refer to the interpretation applied in claim 2, further noting that no portion of the mating surface is in contact with the insulating material.
Claim 4: Hirao further teaches wherein the heat-insulating material in the assembly prepared in the step B contacts 60% or more of a total area of the side surface (see, for example, Figure 5, 7, 8, 10, and supporting text, such as Fig 8, wherein the side surface is interpreted as the surface positioned between the top and bottom article 21A which contacts heat insulating material (23)).
Claim 5: Hirao further teaches wherein the at least one heat-generating member in the assembly prepared in the step B has a surface that faces and is parallel to one or both of the first end surface and the second end surface to which the coating material is applied (see, for example, Figure 5, 7, 8, 10, and supporting text, the self healing elements are explicitly taught as comprising loose SIC abrasive grains (1mm in diameter), interpreting the at least one heat-generating member as a singular SIC abrasive grain positioned at the top of the stack of SIC abrasive grains and adjacent to the article (upper 2) intended to be mated with the ceramic (lower 2), the portion of the grains surface parallel to the first end surface would face it).
Claim 6: Hirao further teaches wherein the at least one heat-generating member in the assembly prepared in the step B has a surface that faces the entire surface of one or both of the first end surface and the second end surface to which the coating material is applied (see, for example, Figure 5, 7, 8, 10, and supporting text, the self healing elements are explicitly taught as comprising loose SIC abrasive grains (1mm in diameter), interpreting the at least one heat-generating member as a singular SIC abrasive grain positioned at the top of the stack of SIC abrasive grains and adjacent to the article (upper 2) intended to be mated with the ceramic (lower 2), the outer surface of the grain in the direction of the entire first end surface would face said surface, further interpreting wherein the “entire” surface of the first /second end surface is the said surface).
Claim 7: Hirao further teaches wherein the at least one heat-generating member in the assembly prepared in the step B has a surface facing the entire surface of one or both of the first end surface and the second end surface to which the coating material is applied, and has a surface facing the part to which the coating material is applied in the portion of the side surface near the first end surface and the portion of the side surface near the second end surface. (see, for example, Figure 5, 7, 8, 10, and supporting text, refer further to the rejection of claims 1+ 2 wherein the entire surface of the first / second end surface and portion of the side surface are interpreted as residing on the mating surface to which , the outer surface of the grain in the direction of the mating surface would face said claimed surfaces).
Claim 8: Hirao further teaches wherein the heat-generating member comprises a material that absorbs microwave, and the step C comprises irradiating the heat-generating member with microwave (See, for example, pg 1-2, Figure 5, 7, 8, 10, and supporting text (EM wave was irradiated into the chamber by microwave oscillator to heat the self-heating element(s)).
Claim 9: Hirao further teaches wherein assuming H is a length from the first end surface to the second end surface, and D is an equivalent circle diameter of the first end surface and the second end surface, 1.0≤H/D is satisfied (see, for example, for example, pg 1-2, Figure 5, 7, 8, 10, and supporting text , per embedment of Fig 8, SIN same 21A possessing a diameter of 28 mm, and a length of 60 mm, thus H/D ~ 2.14).
Claim 10: Hirao further teaches wherein the ceramic has a plurality of flow paths extending from the first end surface to the second end surface (See, for example, Fig 2).
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.
Claim(s) 1-10 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Hirao et al (JP 2011-25313; citations directed to machine translation provided herein, hereafter Hirao) in view of Mako, JR. et al (US 2015/0260322; hereafter Mako).
Claim 1: Hirao teaches a method for producing a coated ceramic (such as bonding agent (2) / (13) on ceramic) (See, for example, abstract, pg 1-2) comprising:
a step A of preparing a pillar-shaped ceramic (such as 1, 12, 21) having a first end surface (such as portion of intended mating surface), a second end surface (such as surface on opposite end of ceramic article, or alternatively a different portion of the intended mating surface), and a side surface (such as another portion of the intended mating surface and bridging surface, portion of mating opposing surface and bridging surface, or portion of the surface bridging the two) (see, for example, Figure 5, 7, 8, 10, and supporting text),
wherein a coating material (bonding agent / glass 2, 13, 22) is applied to at least a part of one or both of the first end surface and the second end surface (see, for example, Figure 5, 7, 8, 10, and supporting text);
a step B of preparing an assembly in which the ceramic and at least one heat-generating member(6, 17, 24) are entirely covered with a heat-insulating material (8, 18, 23, 3, 14, 5, 16, 9, 26 (taken individually or collectively per the embodiment))
and the heat-insulating material is in contact with the side surface and surrounds the side surface (see, for example, Figure 5, 7, 8, 10, and supporting text, such as 23 of Fig 8);
and a step C of firing the coating material applied to at least the part of one or both of the first end surface and the second end surface end surface by generating heat from the at least one heat-generating member of the assembly (see, for example, abstract, pg 1-2, Figure 5, 7, 8, 10, and supporting text).
This alternative rejection is based on the interpretation that the at least one heat-generating member is the entire structure of self heating elements 6/ 17/ 24. By such an interpretation, the entire element is not disposed facing one or both of the first end surface and the second end surface to which the coating material is applied. Mako teaches a method of producing a coated and joined ceramic (See, for example, abstract). Mako further teaches wherein structuring mating surfaces to include stepped , square toothed, pegged surface structures provides for more joining surface area which strengthens the joint as well as improves alignment (See, for example, [0054], [0065], Fig 7-8). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated stepped features, square toothed features along the mating surface as such features would predictably enhance joining surface area which strengthens the joint as well as improve alignment between mating surfaces.
As a result of incorporating stepped / square toothed features on the mating surface, a portion of the mating surface possessing a vertical orientation is interpreted as the first end surface, to which the similarly vertically oriented heat-generating member would face.
Claim 2: Hirao in view of Mako teach the method of claim 1 above, and they further teach wherein the coating material is further applied to at least a part of one or both of a portion of the side surface near the first end surface and a portion of the side surface near the second end surface of the ceramic prepared in the step A (see, for example, Figure 5, 7, 8, 10, and supporting text of Hirao, and Fig 7-8, and [0054], [0065] of Mako; where by the applied combination, the mating surface that received coating material comprises vertically oriented surfaces wherein a portion thereof can be interpreted as a portion of the side surface near the first end surface) (see, for example, abstract, Figure 5, 7, 8, 10, and supporting text).
Claim 3: Hirao further teaches wherein the insulating material in the assembly prepared in the step B does not come into contact with the part to which the coating material is applied in the portion of the side surface near the first end surface and the portion of the side surface near the second end surface (see, for example, Figure 5, 7, 8, 10, and supporting text; and refer to the interpretation applied in the rejection of claim 2 over Hirao in view of Mako, further noting that no portion of the mating surface is in contact with the insulating material.
Claim 4: Hirao further teaches wherein the heat-insulating material in the assembly prepared in the step B contacts 60% or more of a total area of the side surface (see, for example, Figure 5, 7, 8, 10, and supporting text, such as Fig 8, wherein the side surface is interpreted as the surface positioned between the top and bottom article 21A which contacts heat insulating material (23)).
Claim 5: refer to the rejection of claim 1 over Hirao in view of Mako where by the applied combination, the mating surface that received coating material comprises vertically oriented surfaces wherein a portion thereof can be interpreted as the first end surface to which the coating material is applied and the heat generating member possesses similarly parallel-oriented facing surfaces thereto (see, for example, Figure 5, 7, 8, 10, and supporting text of Hirao, and Fig 7-8, and [0054], [0065] of Mako). Per such an interpretation, at least one heat-generating member surface is oriented to face and is parallel to of the first end surface to which the coating material is applied).
Claim 6: refer to the rejection of claim 1 over Hirao in view of Mako where by the applied combination, the mating surface that received coating material comprises vertically oriented surfaces wherein a portion thereof can be interpreted as the “entire surface of one or both of the first end surface and the second end surface to which the coating material is applied, and the heat generating member possesses similarly parallel-oriented facing surfaces thereto) (see, for example, Figure 5, 7, 8, 10, and supporting text of Hirao, and Fig 7-8, and [0054], [0065] of Mako). Per such an interpretation, at least one heat-generating member surface is oriented to face the entire surface of one or both of the first end surface and the second end surface to which the coating material is applied).
Claim 7: refer to the rejection of claims 1 and 2 over Hirao in view of Mako where by the applied combination, the mating surface that received coating material comprises vertically oriented surfaces wherein a portion thereof can be interpreted as the “entire surface of one or both of the first end surface and the second end surface to which the coating material is applied” and an alternative portion (such as opposing or adjacent) is interpreted as “at least a part of one or both of a portion of the side surface near the fist end surface and a portion of the side surface near the second end surface to which the coating material is applied”; and the heat generating member similarly parallel oriented facing surfaces thereto (see, for example, Figure 5, 7, 8, 10, and supporting text of Hirao, and Fig 7-8, and [0054], [0065] of Mako). Per such an interpretation, at least one heat-generating member possesses a surface oriented to face the entire surface of one or both of the first end surface and the second end surface to which the coating material is applied and a surface facing at least the part of one or both of a portion of the side surface near the fist end surface and a portion of the side surface near the second end surface to which the coating material is applied).
Claim 8: Hirao further teaches wherein the heat-generating member comprises a material that absorbs microwave, and the step C comprises irradiating the heat-generating member with microwave (See, for example, pg 1-2, Figure 5, 7, 8, 10, and supporting text (EM wave was irradiated into the chamber by microwave oscillator to heat the self-heating element(s)).
Claim 9: Hirao further teaches wherein assuming H is a length from the first end surface to the second end surface, and D is an equivalent circle diameter of the first end surface and the second end surface, 1.0≤H/D is satisfied (see, for example, for example, pg 1-2, Figure 5, 7, 8, 10, and supporting text , per embedment of Fig 8, SIN same 21A possessing a diameter of 28 mm, and a length of 60 mm, thus H/D ~ 2.14).
Claim 10: Hirao further teaches wherein the ceramic has a plurality of flow paths extending from the first end surface to the second end surface (See, for example, Fig 2).
Claim(s) 1-7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (US 5,322,537, hereafter Nakamura) in view of Voss et al (US 5,987,882; hereafter Voss).
Claim 1: Nakamura teaches a method for producing a coated ceramic (such as soot / exhaust particulates coated on ceramic honeycomb filter) (See, for example, abstract, Fig 1-3, col 1 lines 1-10, col 5-6 “embodiment 1” ) comprising:
a step A of preparing a pillar-shaped ceramic (such as 5) having a first end surface (such as portion of upstream aligned surface), a second end surface (such as surface on downstream end, or alternatively a different portion of the intended upstream surface), and a side surface (such as another portion of the upstream or downstream surface or portion of the surface bridging the two) (see, for example, Figure 1-3, and supporting text),
wherein a coating material (soot / exhaust particulates) is applied to at least a part of one or both of the first end surface and the second end surface (see, for example, Fig 3, embodiment 1);
a step B of preparing an assembly comprising the ceramic and at least one heat-generating member(7)) (See, for example, Fig 3, embodiment 1).
on a condition that the at least one heat-generating member is disposed facing one or both of the first end surface and the second end surface to which the coating material is applied (see, for example, Fig 3, embodiment 1, downstream face of 7 faces upstream first end surface).
and a step C of firing the coating material applied to at least the part of one or both of the first end surface and the second end surface end surface facing the at least one heat-generating member by generating heat from the at least one heat-generating member of the assembly (see, for example, Fig 3 embodiment 1).
Nakamura further teaches wherein heat-insulating material (6) is in contact with the side surface and surrounds the side surface (See, for example, Fig 3, embodiment 1), but it does not explicitly teach wherein the ceramic and at least one heat-generating member are entirely covered with a heat insulating material. Voss teaches a method coating and regenerating pillar shaped ceramic honeycombs engine filters (See, for example, abstract). Voss further teaches wherein total particulate matter emission can predictably be reduced by providing a heat insulating material coating upon the surfaces of the exhaust train (See, for example, abstract, Fig 1, col 3 line 51 – col 4 line4). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated coating the inner surfaces of the exhaust train with a heat insulating material coating since it would predictably reduce the TPM emissions from the exhaust. By such an incorporation as the inner surface of the exhaust train surrounds/ covers the heat generating member, the heat-insulated coated exhaust train would result in the heat-generating member being entirely surrounded / covered with a heat-insulating material.
Claim 2: Nakamura further teaches wherein the coating material is further applied to at least a part of one or both of a portion of the side surface near the first end surface and a portion of the side surface near the second end surface of the ceramic prepared in the step A (see, for example,1-3; the side surface is interpreted as comprising a contiguous portion of upstream face and bridging cylindrical surface wherein the upstream face portion would be in the path of the exhaust, and thus coated).
Claim 3: Nakamura further teaches wherein the insulating material in the assembly prepared in the step B does not come into contact with the part to which the coating material is applied in the portion of the side surface near the first end surface and the portion of the side surface near the second end surface (see, for example, Fig 1-3, further noting that no portion of the upstream surface is in contact with the insulating material.
Claim 4: Nakamura further teaches wherein the heat-insulating material in the assembly prepared in the step B contacts 60% or more of a total area of the side surface (see, for example, Figure 1-3 wherein the side surface is interpreted as the surface contacting heat insulating material 6).
Claim 5: Nakamura further teaches wherein the at least one heat-generating member (7) has a surface that faces and is parallel to of the first end surface (upstream surface) to which the coating material is applied (see, for example, Fig 3).
Claim 6: Nakamura further teaches wherein the at least one heat-generating member (7) has a surface that faces the entire surface of the first / second end surface ( portion / all of upstream surface) to which the coating material is applied (see, for example, Fig 3).
Claim 7: refer to the rejection of claims 1 and 2 over Nakamura wherein the portion of the side surface near the first end surface is interpreted as residing in plane with the entire first end surface (both on the upstream face of the honeycomb), thus the at least one heat-generating member has a surface facing the entire surface of one or both of the first end surface and the second end surface to which the coating material is applied and a surface facing at least the part of one or both of a portion of the side surface near the fist end surface and a portion of the side surface near the second end surface to which the coating material is applied (see, for example, Fig 3).
Claim 10: Nakamura further teaches wherein the ceramic has a plurality of flow paths extending from the first end surface to the second end surface (See, for example, Fig 1-3, honeycomb filter).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Voss as applied to claim 1 above, and further in view of Goto et al (US 2011/0201493; hereafter Goto).
Claim 9: Nakamura in view of Voss teach the method of claim 1 above, but they are silent as to suitable honeycomb dimensions, so they do not explicitly teach a H/D ratio of greater than or equal to 1. Goto teaches a method of making honeycomb bodies for diesel engine applications (see, for example, abstract, [0001], [0010]). Goto further teaches wherein for such honeycomb substrates the ratio of L/D (H/D) is result effective and should preferably be 1.2 to 1.8 avoid reduction in flow rate of exhaust gas through the filter and system pressure loss (See, for example, [0035]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated an H/D of 1.2 to 1.8 in order to ensure avoidance of reduction in flow rate of exhaust gas through the filter and system pressure loss.
Conclusion
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712