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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/676,664 (the ‘664 provisional application”), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Independent claims 1 and 15 of the instant application recite that the ABX3 crystal has a “birefringence of at least 0.03.” However, the ‘664 provisional application does not appear to provide support for this limitation. Accordingly, the subject matter of all pending claims, including dependent claims 3-6, 12-13, 16-18,m 20, 24, 26, and 31-34 are only supported by the filing date of the 371 application which is May 24, 2019.
Additionally, the birefringence values recited in claims 13 and 26, the linear dichroism of at least 0.2 recited in claim 16, and the difference in wavelength recited in claim 17 do not appear to be supported by the ‘664 provisional application. Accordingly, the specific subject matter recited in these claims is only supported by the filing date of the 371 application which is May 24, 2019.
Claim Objections
The objection to claim 48 is withdrawn in view of applicants’ cancellation of the claim.
Claim Interpretation
A single-crystal needle or a single-crystal plate as recited in the context of claims 1 and 15 are respectively interpreted as having the structure of the needle-like crystals (230) and platelet-like single crystals (232) in Figs. 2A-B and ¶[0038] of the specification. Moreover, a plate is defined by the Merriam-Webster online dictionary as “a smooth flat thin piece of material” whereas a needle is defined as “a slender pointed object resembling a needle” with a needle in this context being a sewing needle.
Claim Rejections - 35 USC § 112
The preceding 35 U.S.C. 112(a) scope of enablement rejection of claims 1-8, 10, 12-13, 15-18, 20-21, 223-24, 26-46, and 48-49 is withdrawn in view of applicants’ claim amendments.
The preceding 35 U.S.C. 112(b) rejection of claims 1-8, 10, 12-13, 15-18, 20-21, 23-24, and 26-49 is withdrawn in view of applicants’ claim amendments.
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-6, 12-13, 15-18, 20, 24, 26, and 31-34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As amended, claims 1 and 15 recite that the BaTiS3 crystalline material formed by the process of mixing and then reacting a plurality of powder precursor materials together is comprised of “anisotropic single-crystal plates or needles.” It is noted that Figs. 2A-F & 3A-E and ¶¶[0038]-[0040] of corresponding U.S. Patent Appl. Publ. No. 2021/0206652 teach a method of forming single-crystal platelets (232) and needles (230) of BaTiS3. However, in the first line of ¶[0038] the specification teaches that these crystals were formed by a vapor transport method which utilizes iodine as a transport agent. However, claims 1 and 15 appear to recite a method in which a plurality of powder precursor materials are mixed together and then reacted. This process does not involve vapor transport and produces a polycrystalline material rather than single crystal plates or needles as claimed. Accordingly, the specification as originally filed does not teach or suggest a method of producing “anisotropic single-crystal plates or needles” comprising BaTiS3 by reacting a plurality of powder precursor materials together. Dependent claims 3-6, 12-13, 16-18, 20, 24, 26, and 31-34 are similarly rejected due to their dependence on claim 1 or 15.
Claims 1, 3-6, 12-13, 15-18, 20, 24, 26, and 31-34 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? The standard to be applied is set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See also MPEP 2164. The factors to be considered to determine whether any necessary experimentation is undue, also known as The Wand factors, include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The invention disclosed in the instant application broadly relates to a method for forming a crystalline material having the formula ABX3 which has an anisotropic, quasi-one-dimensional crystal structure and exhibits a birefringence of at least 0.03. In the formula ABX3, A is at least one of the alkaline earth ions or the alkali metal ions, B is a transition metal ion surrounded by six anions X. The crystalline material ABX3 is disclosed as being prepared by a process which is shown in Fig. 4 of the instant application and involves a first step (402) of mixing a plurality of precursor materials together including a transition metal ion and at least one of an alkaline earth ion or an alkali metal ion and a second step (404) of reacting the combined precursor materials to obtain the crystalline material having the formula ABX3. In at least Figs. 1-3 and ¶¶[0036]-[0040] of the published application the specification discusses the crystalline material BaTiS3 and how it exhibits a birefringence of up to 0.76 and a specific example of its manufacture from powdered precursor materials is provided in ¶¶[0044]-[0045]. Independent claims 1 and 15 broadly recite forming anisotropic single-crystal plates or needles comprised of BaTiS3 by reacting a plurality of powder precursor materials which include a transition-metal ion and at least one of an alkaline earth ion or an alkali metal ion. The process in claims 1 and 15 corresponds to that disclosed in Fig. 4, ¶¶[0041]-[0043], and the Example in ¶¶[0044]-[0045] of the specification which appear to involve the formation of polycrystalline BaTiS3 crystal since stoichiometric amounts of the powdered precursor materials are merely mixed together in a sealed quartz tube which is heated at a predetermined ramp rate of 0.3 °C/min, held at 1,000 °C for 60 hours, and then cooled at 100 °C/min. In this case crystal growth would proceed via solid state reaction(s) and sintering processes which conventionally do not yield single crystal needles or plates. The single crystal needle (230) and plate (232) shown in Figs. 2A-B are disclosed in ¶[0038] of the published application as being formed by a vapor transport method which is known in the art as involving a process where precursor vapors are sublimed or evaporated from a solid source, transported via a carrier gas, and then deposited onto a substrate where growth of a single crystal may occur. This is vastly different from the solid state reaction which occurs from powdered precursor materials as disclosed in Fig. 4, ¶¶[0041]-[0043], and the Example in ¶¶[0044]-[0045] of the specification. Thus, the specification as originally filed does not enable the formation of single crystal plates or needles of BaTiS3 by a process which involves mixing a plurality of powder precursor materials together and then reacting the combined precursor material as recited in the context of claims 1 and 15. This necessarily is the case because stoichiometric quantities of a plurality of powdered precursor materials do not somehow spontaneously transition into single crystal needles or plates upon heating, no matter what experimental conditions are used, including the types of powdered precursor materials used, their composition and relative concentrations, as well as the temperature(s), gas ambient(s), pressure(s). Mixing and then heating a plurality of powdered precursor materials conventionally produces solid state reactions between individual powder particles of the different precursor materials followed by sintering and/or grain growth which produces a polycrystalline material. The formation of a single crystal conventionally requires a seed, a template, or some type of substrate which directs assembly of the atoms into a single crystal such as, for example, by the formation of atomic bonds. It therefore is the Examiner’s position that the method as recited in the context of claims 1 and 15 is not enabled because a single crystal needle or plate cannot be formed by mixing and reacting a plurality of powder precursor materials. Dependent claims 3-6, 12-13, 16-18, 20, 24, 26, and 31-34 are similarly rejected due to their dependence on claim 1 or 15.
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, 3-6, 12-13, 15-18, 20, 24, 26, and 31-34 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 pre-AIA the applicant regards as the invention.
As amended, claims 1 and 15 recite that the crystalline material “compris[es] BaTiS3,” but then further recites that the combined precursor material “ha[s] a formula ABX3, wherein A is the at least one of the alkaline earth ion or the alkali metal ion and B is the transition-metal ion surrounded by six anions (X).” It is unclear how a crystalline material comprised of BaTiS3 is produced from precursor materials with the formula ABX3 when A, B, and X are anything other than Ba, Ti, and S. The language of claims 1 and 15 implies that BaTiS3 can be produced from precursor comprised of other elements in Groups I and II of the periodic table and other transition metals, but it is unclear how this happens as the elements Ba, Ti, and S cannot be produced in the final product if they are not present in the precursor material. For examination purposes it is assumed A, B, and X in the precursor material are Ba, Ti, and S, respectively. Dependent claims 3-6, 12-13, 16-18, 20, 24, 26, and 31-34 are similarly rejected due to their dependence on claim 1 or 15.
Response to Arguments
Applicants’ arguments filed August 15, 2025, have been fully considered and are persuasive, but they are moot in view of the new grounds of rejection set forth in this Office Action. Applicants’ amendments to claims 1 and 15 necessitated the 35 U.S.C. 112(a) rejections as set forth in this Office Action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 KENNETH A BRATLAND JR whose telephone number is (571)270-1604. The examiner can normally be reached Monday- Friday, 7:30 am to 4:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached on (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714