DETAILED ACTION
A response, presenting arguments, was entered on 8/5/26.
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 Arguments
Applicant’s arguments concerning the 112(b) rejection due to the term “high-melting compound” are persuasive and this rejection has been withdrawn.
Applicant argues that Ishikawa teaches away from the type of precoating described in Sutton at, e.g., ¶ 0010, because Ishikawa does not want the pores to be blocked prior to penetrating the pores with particles. This is persuasive and this rejection has been withdrawn.
Applicant also argues that the double patenting rejections should be withdrawn for the same reasons. This is not persuasive. A double patenting rejection relies upon a comparison of the claims of the reference patent and the instant invention, not the disclosure or what was known in the prior art. MPEP § 804(III). In this case, nothing in any of the reference patents precludes the precoating step disclosed by Sutton. While the claims of the references patents can be interpreted in view of their specification, applicant has not pointed to any disclosure in these patents which cause an interpretation of their claims to teach away from the cited combination. Furthermore, it does not appear that the clogging discussed in Ishikawa is discussed in any of these patents.
Applicant also argues that the double patenting rejection does not address each claim fully. This is not persuasive. Each of the reference patents contain subject matter nearly identical to the instant claims except for the catalytic loading which is taught by Sutton.
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 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-13 of U.S. Patent No. 11,305,269 in view of Sutton et al. (US 2016/0310935). The ‘269 Patent claims the same subject matter as claims 1, 3 and 9 except that the ‘269 Patent fails to claim catalytically loading the filter prior to impingement. Sutton teaches a process of applying aerosolized powder to an exhaust filter (Abst.) and explains that the filter can be precoated with a catalytically active washcoat (¶ 0029). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have utilized a precoated filter in Ishikawa with the predictable expectation of success.
Claims 1, 9 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-10 of U.S. Patent No. 11,441,459 in view of Sutton. The ‘459 Patent claims the same subject matter as claims 1, 9 and 15 except that the ‘459 Patent fails to claim catalytically loading the filter prior to impingement. Sutton teaches a process of applying aerosolized powder to an exhaust filter (Abst.) and explains that the filter can be precoated with a catalytically active washcoat (¶ 0029). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have utilized a precoated filter in Ishikawa with the predictable expectation of success.
Claims 1, 3, 9 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15 of U.S. Patent No. 11,566,548 in view of Sutton. The ‘548 Patent claims the same subject matter as claims 1, 3, 9 and 15 except that the ‘548 Patent fails to claim catalytically loading the filter prior to impingement. Sutton teaches a process of applying aerosolized powder to an exhaust filter (Abst.) and explains that the filter can be precoated with a catalytically active washcoat (¶ 0029). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have utilized a precoated filter in Ishikawa with the predictable expectation of success.
Claims 1, 2, 6, 8, 11 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-8 and 18 of U.S. Patent No. 11,808,189 in view of Sutton. The ‘189 Patent claims the same subject matter as claims 1, 2, 6, 8, 11 and 15 except that the ‘189 Patent fails to claim catalytically loading the filter prior to impingement. Sutton teaches a process of applying aerosolized powder to an exhaust filter (Abst.) and explains that the filter can be precoated with a catalytically active washcoat (¶ 0029). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have utilized a precoated filter in Ishikawa with the predictable expectation of success.
Claims 1-6, 8-12 and 15-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,220,658 in view of Sutton. The ‘658 Patent claims the same subject matter as claims 1-6, 8-12 and 15-21 except that the ‘658 Patent fails to claim catalytically loading the filter prior to impingement. Sutton teaches a process of applying aerosolized powder to an exhaust filter (Abst.) and explains that the filter can be precoated with a catalytically active washcoat (¶ 0029). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have utilized a precoated filter in Ishikawa with the predictable expectation of success.
Allowable Subject Matter
If the double patenting rejections are overcome with a terminal disclaimer, claims 1-6, 8-12 and 15-21 would be in condition for allowance.
Ishikawa (US 2010/0011726) teaches a method of producing a wall-flow filter having an inlet and outlet for reducing harmful substances in exhaust gas (Abst.; ¶¶ 0012-0013), wherein the filter is selectively impinged with heat-resistant ceramic particles (i.e. claimed high melting compound) via a dry powder/compressed air aerosol (¶¶ 0035, 0039, 0045), wherein the powder is dispersed in the gas (¶¶ 0035, 0045) and drawn into the exhaust inlet side of the filter without further supply of gas (¶ 0045). Ishikawa fails to teach a precoat and instead teaches away from a precoat which blocks the pores in the filter’s sidewalls.
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 Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
