The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW GROUND OF REJECTION NECESSITATED BY AMENDMENT
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.
Re claims 1 and 6-7, the oxide and dopant portions of the plurality of crystals have more than one variation and lack definiteness which further makes it unclear what portion consists of the other crystals claimed. For purposes of this office action, it will be interpreted as any portion in the crystals having the oxide or dopants as set forth in the action below.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-3, 8, 10-12, 14, and 16-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over US 20080318107 A1 Hirashige et al. in view of US 20180073121 to Habu et al.
Re claims 1-3, 8, 10-12, 14, and 16-18, Hirashige essentially teaches the claimed invention: a composite film of materials within overlapping ranges of proton polymer in paragraph 0062 which discloses polymer such as polyether ether ketone (identical to that in claims 12 and 14) doped with proton donor and zinc oxide hydrates or tungsten oxide hydrates (0061) which are in the form of crystals (0039), i.e. metal oxide crystals (given the same material, said oxide functions as “reducible”) and have particle size of 1-10 nm (0019) (nanostructured metal oxide crystals). The metal oxide hydrate is present in amount of 5-80 wt.% (0063). No ligands are taught per claim 11. The properties not explicit are thereby inherent as the same materials and amounts are employed (i.e., claim 18).
Further re claims 1 and 16, while it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on the applicant to show that the additional ingredients in the prior art would in fact be excluded from the claims and that such ingredients would materially change the characteristics of the applicant’s invention. See MPEP 2111.03.
Hirashige fails to disclose 20-90 vol% per claims 1 and 16 nor the thickness per claim 17.
Habu teaches [55] 60 vol.% metal zirconium oxide particles in a layer resulting in a thickness of 150 microns, which overlaps applicant’s ranges for maintaining lightweight properties [14].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Although there is no disclosure in Hirashige et al. of the amount of metal oxide crystals in vol%, given that Hirashige et al. discloses broad amount of metal oxide of 20-80 wt.%, and the amount taught in Habu overlaps the claimed vol% and exclude other materials in the metal oxide hydrate crystal outside of those precluded and thicknesses ranges for maintaining lightweight properties such properties would have been advantageous in electronics.
Claims 5-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over US 20080318107 A1 Hirashige et al. in view of US 20180073121 to Habu et al. and further in view of US 20120028125 A1 to Kobori et al.
Re claims 5-7, Hirashige doesn’t teach specific metal oxides claimed in the cerium doped samarium or gadolinium oxides as claimed.
Kobori teaches [0085] Examples of the metal double oxide that contains two or more metallic elements and that can be used as the metal oxide in the present invention include cerium oxide doped with gadolinium for a binding material [80] in electronics.
It would have been obvious to one having ordinary skill in the art to have modified the metal oxide of Hirashige to have only the cerium oxide doped with gadolinium, either being excluded other materials in the crystal outside of those precluded of Kobori for serving as a binding material.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Transition metals in a dispersion layer is taught in Miyagi of record.
See also the international search report.
Response to Amendments
Applicant’s amendments are acknowledged; however, are not convincing as applicant argues the amendments do not necessarily exclude metal oxide hydrates by consisting of language. However, Applicant’s attention is drawn to the fact that Hirashige only teaches metal oxide in the crystal but also note since there is a “plurality of crystals of either metal oxide or metal oxide doped with one or more dopants” claimed in a “comprising” of claim, it is not interpreted as narrow as applicant argues as other materials may be present given the claimed optional and open language. Note further the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52. “A consisting essentially of' claim occupies a middle ground between closed claims that are written in a consisting of' format and fully open claims that are drafted in a comprising' format.” PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir.1998). See also Atlas Powder v. E.I. duPont de Nemours & Co., 750 F.2d 1569. Absent a clear indication in the specification or claims of what the basic and novel characteristics actually are (e.g. absence of the film material of Hirashige), “consisting essentially of” will be construed as equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355. Applicant is welcomed to amend the claims to what is intended.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787