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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 3/31/26 is acknowledged.
Claims 14, 22 and 23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/31/26.
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 1-6, 8-12 and 15-21 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.
Claim 1 recites a “high-melting compound”. It is not clear what the metes and bounds of “high-melting” is in this context.
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.
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 1-5, 9, 11, 15-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (US 2010/0011726) in light of Sutton et al. (US 2016/0310935).
Claims 1-2, 4, and 18: Ishikawa 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. 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) formed by catalytically coating the filter and then drying it (¶¶ 0029, 0065). 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.
Claim 3: Ishikawa does not discuss a specific moisture content. However, Ishikawa teaches away from using moisture to deposit the particles (¶ 0035) and teaches ceramics which, without adding moisture to the particles, one of ordinary skill in the art would expect to be dry (¶ 0039). Thus, it is implicit that the particles have a moisture content of less than 20%.
Claims 5 and 11: Ishikawa teaches an increasing gradient of powder from the inlet to the outlet set by an accelerated flow upstream of the filter (¶¶ 0036-0037, 0045) .
Claim 9: Ishikawa further teaches different flow rates can be selected to provide different concentration gradients (Table 2). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected flow rates of 5-50 m/s depending on the desired gradient with the predictable expectation of success.
Claims 15 and 19: Ishikawa is silent regarding how much of the particles deposit in the pores, but explains that the percentage of pores which are filled affects the efficiency of PM capture (¶¶ 0036-0037). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a pore filling percentage of 8-35% and a powder load of 50 g/L with the predictable expectation of success depending on the desired PM capture efficiency.
Claims 16 and 20: Ishikawa further teaches that platinum can be included with aluminum oxide as part of the ceramic particles used to fill the filter (¶ 0047).
Claims 6, 8, 12, 17 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa and Sutton in light of Tsuji et al. (US 2011/0229634).
Claims 6, 8, 17 and 21: Ishikawa teaches various ceramics, such as aluminum titanate are suitable (¶ 0039), but fails to teach one of the claimed materials. Tsuji teaches a substantially similar process (Abst.) and explains that aluminum titanate or aluminum oxide (i.e. claimed oxide and claimed catalytically active material) may be selected as the deposited high melting point ceramic (¶ 0130). 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 selected aluminum oxide in place of aluminum titanate with the predictable expectation of success.
Claim 12: Ishikawa is silent regarding vortexing. Tsuji teaches that vortexing the gas flow prior to entering the filter is beneficial because it provides a separating function (¶ 0067). Thus, it would have been obvious to one of ordinary skill at the time of filing to have vortexed the gas stream in Ishikawa in order to have separated undesirably large particles from the gas stream.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa and Sutton in light of Lader et al. (US 5,454,872).
Claim 10: Ishikawa teaches extracting air downstream of the suction device (Fig. 4, e.g.), but fails to teach doing this before adding powder to the air. Lader teaches a process of depositing sprayed powder in air and explains that it is conventional to recycle air in the process (i.e. extract air downstream of the suction device and reuse said air with powder during the next application) (1:19-34). Thus, it would have been obvious to one of ordinary skill at the time of filing to have extracted air downstream of the suction device and reused said air with powder during the next application in order to have recycled the air.
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. 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.
Conclusion
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
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