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 with traverse of species 1B and 2B, relevant to claims 26, 28, 32-42 and 44-47 in the reply filed on 5/23/2025 is acknowledged. The traversal is on the ground(s) that Yu “only teaches hydrogen storage alloys of the general formula TiMni25-xCro 25(VFe)X, which substantially differs from the general formula recited in the pending claims; only teaches the modification of a Mn and VFe ratio (see, for example, page 266, Conclusions (1) and (2)), and is silent on any modification of Mn and Cr as presently claimed; and is only concerned with increasing a hydrogen storage capacity (see Abstract) and is entirely silent in relation to hydrogen hysteresis.” This is not found persuasive for the reasons set forth in the below 35 USC 102/103 rejection claims 26, 28, 34-42 and 45-47 over Yu.
Claims 27, 29-31 and 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/02/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112(b)
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 26, 28, 32-42 and 44-47 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.
Instant claim 26 recites the limitation “A method for making a TiCrMn-based hydrogen storage alloy” yet explicitly allows for u, the atomic ratio of Cr, to be 0. As such it is unclear whether Cr is required to be present by instant claim 26.
Additionally, the term “reduced hysteresis” in claim 26 is a relative term which renders the claim indefinite. The term “reduced hysteresis” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the hysteresis of the alloy indefinite which renders the scope of the claims indefinite.
Additionally, instant claim 26 recited the limitation “the method comprising modifying the composition of the alloy to achieve the property profile… and wherein modifying the composition of the alloy comprises modifying the ratio of Mn and Cr in the alloy to achieve the property profile of a reduced hysteresis.” This limitation is indefinite for several reasons. First off, it is unclear what specifically is meant by modifying the ratio of Mn and Cr in the alloy to achieve the property of a reduced hysteresis. It is unclear whether the Mn and Cr are being modified to be within the instantly claimed composition range, or if the Mn and Cr are being modified to be outside the claimed composition, or what specific ratios of Mn and Cr obtain the instantly claimed indefinite property of a “reduced hysteresis.” It is also unclear what specific method steps encompass “modifying” the composition. The instant specification at instant para [00123] discloses that the general process steps involve “1) Prepare the appropriate quantity of all of the elements to form the required composition of the alloy. 2) Place all of the elements in the arc-melter under an inert atmosphere. 3) Commence melting the higher temperature metals, e.g., Ti, followed by melting the lower melting temperature elements, e.g., VFe, Cr, Zr, Mn.” The alloys referenced in the instant specification appear to meet the claimed composition ranges. Thus, for the purposes of search and examination, the instantly claimed modifying step will be interpreted as selecting quantities of each element consistent with the instantly claimed composition prior to forming the alloy.
Instant claims 28, 32-42 and 44-47 depend from instant claim 26 and are indefinite for at least the same reasons.
Regarding claim 28, the term “increased H2 uptake/release pressure” in claim 28 is a relative term which renders the claim indefinite. The term “reduced hysteresis” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the H2 uptake/release pressure of the alloy indefinite which renders the scope of the claims indefinite.
Additionally, instant claim 28 recites the limitation “modifying the composition of the alloy comprises including at least one modifier element selected from Fe, Cu, Co and Ti.” This limitation does not appear to further limit instant claim 26 because Ti is a required element of instant claim 26 from which instant claim 28 depends. Furthermore, Cu is listed as a possible modifying element yet Cu is not permitted in the formula of instant claim 26.
Regarding claim 32, instant claim 32 recites the limitation “wherein modifying the composition further includes adding Co as a partial substitution of Mn,” but the formula of instant claim 1 contains a comprehensive list of elements permitted in the alloy and Co is not included. Furthermore, it is unclear if said partial substitution would allow for Mn values outside of the instantly claimed ranges.
Regarding claim 33, instant claims 33 recites the limitation “wherein modifying the composition further includes adding Zr as a partial substitution of Ti.” This limitation is indefinite because instant claim 26 recites compositional ranges for both Zr and Ti, and it is unclear if this limitation is attempting to claim values of Zr higher than those claimed in instant claim 26 and values of Ti lower than those claimed in instant claim 26.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 28, 32 and 33 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 28, instant claim 28 recites the limitation “modifying the composition of the alloy comprises including at least one modifier element selected from Fe, Cu, Co and Ti.” This limitation does not appear to further limit instant claim 26 because Ti is a required element of instant claim 26 from which instant claim 28 depends. Furthermore, Cu is listed as a possible modifying element yet Cu is not permitted in the formula of instant claim 26.
Regarding claim 32, instant claim 32 recites the limitation “wherein modifying the composition further includes adding Co as a partial substitution of Mn.” This limitation is indefinite because instant claim 26 recites compositional ranges for both Co and Mn, and it is unclear if this limitation is attempting to claim values of Co higher than those claimed in instant claim 26 and values of Mn lower than those claimed in instant claim 26. As such, instant claim 33 appears to lie outside the scope of instant claim 26 from which instant claims 33 depends.
Regarding claim 33, instant claims 33 recites the limitation “wherein modifying the composition further includes adding Zr as a partial substitution of Ti.” This limitation is indefinite because instant claim 26 recites compositional ranges for both Zr and Ti, and it is unclear if this limitation is attempting to claim values of Zr higher than those claimed in instant claim 26 and values of Ti lower than those claimed in instant claim 26. As such, instant claim 33 appears to lie outside the scope of instant claim 26 from which instant claims 33 depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102/103
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 26, 28, 34-42 and 45-47 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “Effect of VF addition on hydrogen storage behavior of TiMn1.5-based alloys” by Yu et al (cited by applicant in IDS).
Regarding claim 26, Yu discloses a method for making a TiCrMn-based hydrogen storage alloy having a formula which lies within the instantly claimed formula as follows:
Element
Claimed subscript
Yu subscript
Lies within?
Ti
0.9-1.1
1
Yes
Zr
0-0.4
≤impurity
Yes
Mn
0.9-1.6
1.15, 1.05, 0.95, 0.85
Yes
Cr
0-1
0.25
Yes
(V0.85Fe0.15)
0.01-0.6
0.1, 0.2, 0.3, 0.4
Yes
V+Fe+Co+Mo
0-0.4
≤impurity
Yes
Wherein making the alloy includes adding ferrovanadium comprising 82.6 mass% V and 16.52 mass% Fe, which corresponds to V0.85Fe0.15 (Yu, abstract, pages 263-264, “2 Experimental procedure”).
Regarding the limitation “the method comprising modifying the composition of the alloy to achieve the property profile… and wherein modifying the composition of the alloy comprises modifying the ratio of Mn and Cr in the alloy to achieve the property profile of a reduced hysteresis,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, the instant specification at instant para [00123] discloses that the general process steps involve “1) Prepare the appropriate quantity of all of the elements to form the required composition of the alloy. 2) Place all of the elements in the arc-melter under an inert atmosphere. 3) Commence melting the higher temperature metals, e.g., Ti, followed by melting the lower melting temperature elements, e.g., VFe, Cr, Zr, Mn.” Yu discloses measuring and melting the constituent ingredients in the same manner, and Yu has an amount of Mn and Cr lying within the instantly claimed range and as such discloses a ratio encompassed by the instantly claimed range. As such, Yu appears to disclose the instantly claimed modifying step. Regarding the limitation of “a property profile of a reduced hysteresis,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Yu would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Yu has the same or substantially the same composition, structure and method of manufacture. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claim 28, the alloy of Yu contains Ti as a modifier element. Regarding the limitation “wherein the property profile further comprises increased H2 uptake/release pressure,” when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Yu would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Yu has the same or substantially the same composition, structure and method of manufacture. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claim 34 and 46, Yu discloses annealing at 1223 K (Yu, “2 Experimental procedure,” page 263), i.e. 949.85 °C, within the instantly claimed ranges of 900 °C-1200 °C and 900-1100 °C
Regarding claims 35-39, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Yu would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Yu has the same or substantially the same composition, structure and method of manufacture. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claims 40-42 and 45, the alloy of Yu lies within the instantly claimed ranges.
Regarding claim 47, the alloy of Yu comprises a C14 Laves phase (Yu, “3.1. Phase Structure,” page 264.
Claim(s) 32 and 33 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “Effect of VF addition on hydrogen storage behavior of TiMn1.5-based alloys” by Yu et al (cited by applicant in IDS) as applied to claims 26, 28, 34-42 and 45-47 above in view of the evidentiary reference “Preparation and Characterization of Pure Metals,” by Murray et al.
Yu discloses an alloy as set forth above.
Regarding claims 32 and 33, Murray discloses that Co and Zr are inevitable impurities even in purified titanium (Murray, Tables 2-3, pages 1096-1097). As the alloy of Yu comprises Ti, at least one atom of Co and Zr would be expected to be present as inevitable impurities in the alloy of Yu. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow for at least one atom of Co and Zr to be present in the alloy of Yu, the motivation for doing so being to avoid the costly and difficult process of eliminating Co and Zr down to the atom in the alloy of Yu, if such an operation is even possible.
Allowable Subject Matter
Claim 44 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Instant claim 44 is directed to a method as set forth in the instant claim wherein the atomic subscripts of Mn and Cr in the formula of instant claim 26 are both 1. The closest prior art of record is Yu as set forth in the above 35 USC 102/103 rejection. Yu discloses a TiCrMn-based hydrogen storage alloy made with the addition of (V-0.85Fe0.15). Yu differs from instant claim 44 at least in that the subscripts for Mn are 1.15, 1.05, 0.95, 0.85 and the subscript for Cr is 0.25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738