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 .
Claim Numbering
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 26 has been renumbered to claim 25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 1-14 and 21-25 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.
Claim 1, is amended to recite “drying the substrate; calcining the first layer and the substrate at an initial calcination temperature for an initial length of time; increasing the temperature from the initial calcination temperature to a subsequent calcination temperature; calcining the first layer and the substrate at the subsequent calcination temperature for a subsequent length of time to yield a calcined first layer on a calcined substrate”.
While applicant points to [0031-0032] of the published application for support, however the specification only provide support for specific example,
“The hollow fiber supports were dip-coated with the crystal suspension for 5-7 s and were then dried for 24 h under controlled humidity (40%) and temperature (40°C). The dried seeded supports were then calcined at 450°C for 8 h and subsequently at 650°C for 8 h with heating and cooling rates of 20°C h-1. The above- mentioned procedure was repeated up to three times using crystals with different particle sizes according to Table 2.” (specification, [0031]).
Therefore, the specification only provides support for drying the support for 24 h under controlled humidity (40%) and temperature (40°C), calcining the first layer and the substrate at 450°C for 8 h and subsequently at 650°C for 8 h with heating and cooling rates of 20°C h-1.
There is no support in the originally filed disclosure for drying the substrate at any temperature, any humidity for any duration; calcining the first layer and the substrate at any initial calcination temperature for any initial length of time; increasing the temperature from the initial calcination temperature to any subsequent calcination temperature; calcining the first layer and the substrate at the subsequent calcination temperature for any subsequent length of time to yield a calcined first layer on a calcined substrate.
Regarding dependent claims 2-14 and 21-25, these claims does not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 21 recites, “wherein drying the substrate occurs at a temperature in a range of 30 C to 50 °C.” However, there is no support for the claimed limitation.
Claim 22 recites “wherein the initial calcination temperature is in a range of 425 °C to 475 °C.” However, there is no support for the claimed limitation.
Claim 23 recites “wherein the subsequent calcination temperature is in a range of 625 °C to 675 °C.” However, there is no support for the claimed limitation.
Claim 24 recites, “further comprising, after disposing the second zeolite crystals on the calcined first layer: drying the second layer; calcining the second layer at a second initial calcination temperature for a second initial length of time; increasing the temperature from the second initial calcination temperature to a second subsequent calcination temperature; and calcining the second layer at the second subsequent calcination temperature for a second subsequent length of time.” However, there is no support to broadly recite, after disposing the second zeolite crystals on the calcined first layer: drying the second layer at any temperature; calcining the second layer at any second initial calcination temperature for a second initial length of time; increasing the temperature from the second initial calcination temperature to any second subsequent calcination temperature; and calcining the second layer at the second subsequent calcination temperature for any second subsequent length of time, as presently claimed.
Claim 25 recites “wherein drying the second layer occurs at a temperature in a range of 30 °C to 50 °C, the second initial calcination temperature is in a range of 425 °C to 475 °C, and second subsequent calcination temperature is in a range of 625 °C to 675 °C.”. However, there is no support for the claimed limitation.
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.
Claim 25 is 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 25 recites, “The method of claim 25”. However, it is unclear how claim 25 depends itself or which claim claim 25 depends on. The examiner interprets “The method of claim 25” as “The method of claim 24”. Clarification is requested.
Response to Arguments
In response to the amended claims, the previous claim objections and 35 U.S.C. 112(b) rejections are withdrawn. However, the amended necessitates a new set of claim numbering, 35 U.S.C. 112(a) and 35 U.S.C. 112(b) as set forth above.
In response to the amended claim 1, which recites, “drying the substrate; calcining the first layer and the substrate at an initial calcination temperature for an initial length of time; increasing the temperature from the initial calcination temperature to a subsequent calcination temperature; calcining the first layer and the substrate at the subsequent calcination temperature for a subsequent length of time to yield a calcined first layer on a calcined substrate”. It is noted that the referenced teaching from Liu, and Liu in view of Nair would not meet the present claims. Therefore, the previous 35 U.S.C. 103 rejections over Liu, and Liu in view of Nair are withdrawn from the record.
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 Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732