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 .
Response to Amendment
This office action is in response to the Amendment filed on 01/09/2026.
Claims 1 and 3-17 are presently pending; claim 2 is canceled; claims 9-17 are withdrawn; claims 1 and 5 are amended; claims 1 and 3-8 are under examination.
The objection to the abstract is withdrawn in light of the amendments to the abstract; a new objection to the abstract is present herein in light of the amendments to the abstract.
The rejection of claim 5 under 35 U.S.C 112(b) is maintained.
The 35 U.S.C. 102 rejection of claims 1, 3-5 and 7-8 over BAUM is withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejection of claim 6 over BAUM is maintained; the rejection of claim 2 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/09/2026 was filed after the mailing date of the non-final action on 09/12/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses a phrase which can be implied, “The present disclosure provides” (see line 1 of abstract). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
For purposes of claim interpretation, “relative density” as recited in claim 4 (see claim 4 at line 2) is interpreted as meaning a ratio of actual measured density to maximum theoretical density, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraphs [0020] and [0040].
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.
Claim 5 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 5 recites the limitation "wherein the consolidated masses have a uniformity of heat transfer across the individual consolidated masses varying by less than +10% to -10%" (see claim 5 at lines 1-3); the phrase “varying by” is not used in the specification and its use makes it unclear what kind of value is actually being claimed, as the specification indicates that the uniformity value is -10% to 10%, but the claim now indicates that the uniformity value varies from some unrecited value by an amount of less than +10% to -10%. Further, it is not clear in what way or under what conditions uniformity of heat transfer across the individual masses as claimed is measured or calculated, and no examples or explanation regarding the measurement of this property could be located in the specification, so the actual meaning of this limitation is not clear. Therefore, the meaning of the claimed range of uniformity of heat transfer is indefinite, as it is not clear under what external conditions or type of measurement/calculation the consolidated masses would be meant to exhibit some uniformity of heat transfer which varies by less than +10% to -10%.
For purposes of examination, Examiner treated this limitation in claim 5 as meaning that the uniformity is within the range of ± 10%, i.e., less than 10% and more than -10%, and treated consolidated masses as claimed and having a bulk density as claimed as meeting this limitation, as paragraph [0016] of the present specification discusses higher density resulting in more consistent uniformity and heat transfer; MPEP § 2112.01 (I) states that 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. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Therefore, any consolidated mass as claimed would be expected to behave in the same way and exhibit the same properties, including uniformity of heat transfer, when subjected to the same heating conditions. Clarification is requested.
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 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Baum, et al. (U.S. Pub. No. 2018/0282863-A1) (hereinafter, “BAUM”), with evidence from Springer Materials, “MoOCl4 (MoCl4O) Crystal Structure” (hereinafter, “SPRINGER”) as to the rejection of claim 1, and with evidence from Dunkley, “Advances in automisation techniques for the formation of metal powders”, Advances in Powder Metallurgy (hereinafter, “DUNKLEY”) as to the rejection of claims 1 and 6.
Regarding claim 1, BAUM teaches molybdenum oxychloride consolidated masses, comprising: molybdenum oxychloride crystals (see BAUM at paragraphs [0020] and [0026], teaching compacted solid precursor bodies (i.e., consolidated masses), wherein the precursor material may be MoOCl4, which is a form of molybdenum oxychloride);
and less than 10 wt% binder (see BAUM at paragraph [0029], teaching that the compacted material is generally self-adherent and does not need a binder, i.e., can comprise 0 wt% binder, which is less than 10 wt%);
wherein the consolidated masses have a bulk density greater than 0.85 g/cc (see BAUM at paragraph [0020], teaching that the compacted material has a bulk density of, e.g., at least 99% of the absolute density of the precursor material; as evidenced by SPRINGER, MoOCl4 has a density of 2.83 Mg/m3 (i.e., g/cc) (see SPRINGER at pg. 2); a bulk density of at least 99% of 2.83 g/cc is at least 2.8 g/cc); and
wherein at least 90% of the crystals have an average cross body dimension overlapping with and thereby rendering obvious the claimed range of 0.01 mm to 5 mm (see BAUM at paragraphs [0019] and [0024]-[0027], teaching that the compacted precursor material (i.e., consolidated masses) may have dimensions of, e.g., 0.2 cm (2 mm) or more, or smaller than this range when preferred (the precursor material crystals would have to have a smaller size than the compacted material), and that the precursor material is in the form of a fine powder; see DUNKLEY at Section 1.1.2, “Powders”, teaching that it is generally accepted that in order to be described as a powder, a granular solid should have a particle size below 1 mm, and that a fine powder has a particle size below 150 micrometers (i.e., 0.15 mm); therefore, the finely divided powder taught by BAUM is understood to mean having a crystal size of below 0.15 mm; e.g., in paragraph [0070], BAUM provides an example of a fine powder precursor material having a particle size of 40 to 90 micrometers, i.e., 0.04 to 0.09 mm).
As set forth in MPEP § 2144.05, 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 3, BAUM teaches consolidated masses according to claim 1, wherein the consolidated masses comprise greater than 95 wt% molybdenum oxychloride (see BAUM at paragraphs [0026], [0029], [0031] and [0034], teaching that the compacted material does not require a binder, and that pure precursor material is preferred (i.e., pure MoOCl4)).
Regarding claim 4, BAUM teaches consolidated masses according to claim 1, wherein the consolidated masses have a relative density greater than 75% (see BAUM at paragraph [0020], teaching a bulk density of at least 99% of the absolute density, i.e., a relative density of at least 99%).
Regarding claim 5, BAUM teaches consolidated masses according to claim 1, wherein the consolidated masses have a uniformity of heat transfer across the individual consolidated masses within ± 10%. BAUM teaches compacted materials (i.e., consolidated masses) according to claim 1 and having a bulk density of at least 99%, i.e., at least 2.8 g/cc (i.e., a relative density approaching 100%) (see BAUM at paragraph [0020]), which is considered to meet the present limitation regarding uniformity of heat transfer as set forth in the 112(b) rejection above. As discussed in paragraph [0016] of the present specification, higher density results in more consistent uniformity and heat transfer; MPEP § 2112.01 (I) states that 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. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Therefore, the molybdenum oxychloride consolidated masses of BAUM, having a bulk density of at least 2.8 g/cc, would be expected to behave in the same way and exhibit the same properties, including uniformity of heat transfer, as the claimed consolidated masses (which only require a bulk density of greater than 0.85 cc) when subjected to the same heating conditions as the claimed consolidated masses.
Regarding claim 6, BAUM teaches consolidated masses according to claim 1, wherein the molybdenum oxychloride comprises crystals (see BAUM at paragraphs [0026]-[0027] and [0034], teaching crystalline MoOCl4 powder). BAUM does not explicitly mention that the crystals have a surface area greater than 0.0005 cm2/g; however, BAUM teaches that the precursor material is a fine powder, and that smaller particle size results in greater surface area (see BAUM at paragraphs [0002], [0017], [0019], [0024]-[0027] and [0034]). As discussed in the rejection of claim 2 above, powder is understood to mean having a particle size of less than 1 mm, and fine powder is understood to mean having a particle size of less than 0.15 mm, as evidenced by DUNKLEY (see DUNKLEY at Section 1.1.2, “Powders”); e.g., BAUM provides an example of a precursor material fine powder having a size of 0.04 to 0.09 mm (see BAUM at paragraph 0070). As discussed in Applicant’s specification at paragraphs [0010], [0014] and [0022]-[0023], surface area is determined by crystal size, and the claimed invention may have an average cross body dimension of less than 5 mm (e.g., less than 1 mm) and a surface area as claimed of greater than 0.0005 cm2/g.
Therefore, as BAUM teaches consolidated masses as claimed by the present claim, having an average crystal size of less than 5 mm (less than 0.15 mm), the molybdenum oxychloride crystals of BAUM would be expected to have the same or overlapping properties as those of the claimed invention, including a surface area of greater than 0.0005 cm2/g. MPEP § 2112.01 (I) states that 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. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 7, BAUM teaches consolidated masses according to claim 1, wherein the consolidated masses have an average cross body dimension greater than 1 mm (see BAUM at paragraph [0025], teaching that the unitary bodies of compacted precursor material may have dimensions of, e.g., 0.2 cm or more, i.e., 2 mm or more).
Regarding claim 8, BAUM teaches consolidated masses according to claim 1, comprising less than 5 wt% of binder comprising ceramic binders, celluloses, or hydroxyalkyl celluloses, or mixtures thereof (see BAUM at paragraph [0029], teaching that the compacted material does not need a binder, i.e., can comprise 0 wt% binder, which is less than 5 wt%).
Response to Arguments
Applicant's arguments filed 01/09/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 1, 3-5 and 7-8 over BAUM as set forth above.
Applicant argues:
“Baum… fails to disclosed the claimed specific size range for molybdenum oxychloride crystals. Instead, its sole example, Baum simply discloses tungsten pentachloride particles sizes ranging from 40 μm to 90 μm… this disclosure in Baum relates to tungsten pentachloride, an entirely different chemical compound from the claimed molybdenum oxychloride… the application of physical properties for tungsten pentachloride… onto the claimed molybdenum oxychloride crystals is improper… Baum does not and cannot teach the claimed uniformity, e.g., the "at least 90%" feature… Dunkley is simply a source of generalized information only, and fails to supplement Baum so as to arrive at the claimed size range. For the sake of completeness, Dunkley also fails to disclose the specific claimed crystal size range” (see Remarks at pg. 7).
“the claim recites less than 10 wt% of a binder. This provides for reduction or elimination of the purity- and density-related problems… Baum fails to disclose any specific binder content, and makes no mention of the importance of maintaining less than 10 wt% of the binder to avoid the aforementioned issues; Baum fails to even recognize these problems” (see Remarks at pg. 8).
“The references fail to teach or suggest the claimed surface area… nowhere does Baum say that crystal size is the only factor in determining surface area… the simple overlap of crystal size range does not inherently (or expressly) teach the claimed surface area feature” (see Remarks at pg. 8).
“Since Baum's exemplified compounds are of an entirely different chemical composition, and neither reference hints at or suggests the claimed crystal size range or surface area, one of skill in the art looking to either Baum or Dunkley would not have arrived at the claimed composition” (see Remarks at pg. 9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that BAUM does not teach the claimed particle sizes and uniformity, the Examiner respectfully disagrees. As is clear from the rejection above, the mention of the particle size of the tungsten pentachloride example is included as additional support showing that BAUM’s definition of “fine powder” particle size is consistent with the definition in DUNKLEY, and that BAUM explicitly teaches that this is an exemplary powder size which can be used for the compositions of the invention, e.g., the molybdenum oxychloride composition. The rejection does not just rely on particle size of tungsten pentachloride. As discussed in the rejection, BAUM explicitly teaches that the consolidated masses of the invention, including molybdenum oxychloride, may have dimensions of smaller than 2 mm. In order for the entire consolidated mass to have dimensions of smaller than 2 mm, every single particle within the consolidated mass must have a particle size of smaller than 2 mm; obviously a single particle within the consolidated mass cannot be larger than the entire consolidated mass of particles. This means that BAUM explicitly teaches that 100% of the molybdenum oxychloride particles may have a crystal size of less than 2 mm, which falls within the uniformity range of at least 90%. A size of less than 2 mm overlaps with and thereby renders obvious the claimed range as amended. Further, BAUM explicitly teaches that the molybdenum oxychloride crystals are a “fine powder”, which, as evidenced by DUNKLEY, is generally accepted to mean a powder having a particle size below 0.15 mm (and a powder which is not described as “fine” is generally accepted to mean having a particle size below 1 mm, which also overlaps with and thereby renders obvious the claimed range). DUNKLEY does not say average particle size, it says particle size, which is taken to mean that all of the particles of the powder would have a particle size within this range. The example of a “fine powder” included in BAUM also is not called an “average” particle size; it just says a “particle size” of 40-90 μm, which is taken to mean that this is the size range of the particles. BAUM makes it clear that 40-90 μm is an example of an appropriate particle size for the fine powder of the invention, i.e., it is clear that similar particle size ranges would also be appropriate for the molybdenum oxychloride crystals to be considered a fine powder, as BAUM teaches that the tungsten pentachloride and molybdenum oxychloride may be used interchangeably as the precursor powder to form the consolidated masses.
In response to Applicant’s argument that BAUM does not teach the claimed binder content, the Examiner respectfully disagrees. As set forth in the rejection above, BAUM explicitly states that no binder is required. No binder means that 0% binder is included, which is within the claimed range of less than 10%; 0 is less than 10. Any problems or benefits that BAUM may or may not mention are entirely irrelevant as BAUM explicitly teaches the claimed limitation.
In response to Applicant’s argument that BAUM does not teach or suggest the claimed surface area, the Examiner respectfully disagrees. As set forth in the rejection above, BAUM teaches molybdenum oxychloride having the claimed crystal size. It is simple logic that decreasing particle size increases surface area as there is more exposed surface, and it is also explicitly discussed in BAUM and in Applicant’s specification. As set forth above, BAUM teaches pure molybdenum oxychloride consolidated masses which are chemically identical to the molybdenum oxychloride consolidated masses as claimed and have a crystal size overlapping with the claimed crystal size, therefore the specific surface area of the crystals of BAUM would be expected to be the same as or overlapping with the surface area of the claimed invention. MPEP § 2112.01 (I) states that 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. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
In response to Applicant’s argument that one cannot arrive at the claimed composition from BAUM because BAUM teaches an entirely different chemical composition than the claimed composition, the Examiner respectfully disagrees. The claimed composition is molybdenum oxychloride; BAUM explicitly teaches molybdenum oxychloride. This is the identical chemical composition to the invention as claimed, not an “entirely different chemical composition”.
Consequently, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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, Amber Orlando can be reached on 571-270-3149. 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.
/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731