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 .
Claims 1, 3-7, 10 are pending.
Claims 1, 5-7 are under examination on the merits.
Claim 1 is amended.
Claims 2, 8 are newly canceled.
No claims are newly added.
Rejoinder
Claims 3, 4 and 10 are withdrawn. Claims 3 and 4 are rejoined below. Claim 10 describes a product which cannot be rejoined because a product necessarily requires a further search since products produced by other methods can read on the product produced by claim 1. Applicant’s election without traverse on 6/23/25 means that the examiner cannot cancel claim 10 without applicant’s approval. A telephone call was made to Jose Cherson Weissbrot to resolve these and the below issues but Mr. Weissbrot could not be reached.
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.
The 112 rejections set forth in the previous action are withdrawn in view of applicant’s amendment to claim 1.
Claims 3-5 are newly 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.
Claims 3 and 4 depend on claim 2 which has been canceled. Thus the dependency of claims 3 and 4 is not clear. For the purposes of compact prosecution, claim 3 will be assumed to depend on claim 1.
Regarding claim 5, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “heated”, and the claim also recites “preferably, the temperature…is 80-110 DEG C” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of compact prosecution any heating will be considered as reading on the claimed heating.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 7 the word “platesto” should be “plates to”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The amendment to claim 1 obviates the previous rejections over US 20130079430 by Jintoku et al in view of CN 107627527 by Tao et al. Tao, for example, only describes water as the saturating fluid, whereas instant independent claim 1 describes a specific ratio of a combination of water and a non-polar fluid. While Tao describes the presence of some nonpolar fluids like pentane, these are not present at the claimed amounts (paragraph 58, 68, 72).
Allowable Subject Matter
Claims 1, 6, 7 are allowed. The closest art is US 20130079430 by Jintoku et al in view of CN 107627527 by Tao et al which can no longer be applied as described above.
Claims 3-5 would be allowable if the 112 rejection above were properly addressed.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766