DETAILED ACTION
An Office Action was mailed 08/25/2025. Applicant filed a Response on 01/20/2026, and amended claims 2-5.
Claims 1-14 are pending. Claims 2-6 are rejected. Claims 1 and 7-14 are withdrawn from consideration.
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 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 2-6 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 2, as amended, recites an active material “with minimized impurities.” Although the specification provides basis for active materials that suppress the incorporation of impurities derived from the kilns into the active material during firing of the active material (specification, page 3, lines 12-17; page 4, lines 8-11; page 8, lines 15-17), the specification does not provide basis for active materials which broadly have “minimized impurities” as presently claimed.
Amending the term “with minimized impurities” to “that suppresses the incorporation of impurities derived from the kiln into the active material during firing of the active material” can overcome this rejection.
Regarding dependent claims 3-6, these claims do not remedy the deficiencies of parent claim 2 noted above, and are rejected for the same rationale.
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 2-7 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.
The term “minimized” in claim 2 is a relative term which renders the claim indefinite, e.g., minimized as compared to what standard, minimized to what amount or ratio, etc. The term “minimized” 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.
Amending the term “with minimized impurities” to “that suppresses the incorporation of impurities derived from the kiln into the active material during firing of the active material” can overcome this rejection.
Regarding dependent claims 3-6, these claims do not remedy the deficiencies of parent claim 2 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 102
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.
Claims 2-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshitake et al, JP H09302496A (Yoshitake).
Yoshitake discloses a method for plating with a chromium-containing alloy coating, wherein the alloy coating comprises, by weight: 2 to 50% Cr, 40 to 90% Ni and/or Co, and 3 to 50% of at least one of Mo, W and Re (Yoshitake; Abstract, [0001] and [0014]). Substrates for forming the alloy film include, for example, vehicles, chemical plants, piping, and iron-based, nickel-based, copper-based and aluminum materials such as construction materials, and these substrate surfaces (Yoshitake; [0021]).
Yoshitake exemplifies a method of plating a SUS304 plate substrate (i.e., a coating material for coating a surface … wherein the surface directly contacts the active material being prepared), wherein the plating solution results in an alloy film/coating having the following weight ratio: nickel-chromium-tungsten weight ratio of 76.5 : 1.0 : 22.5 (Yoshitake; [0031-0032]).
Nickel (Ni), chromium (Cr), and tungsten (W) have the following molar masses:
Ni = 58.69 g/mol
Cr = 52.00 g/mol
W = 183.84 g/mol
100g of an alloy coating comprising 76.5 weight ratio of nickel (76.5g), 1.0 weight ratio of chromium (1.0g), and 22.5 weight ration of tungsten (22.5g), would comprise the following molar amounts:
76.5g Ni * (mol/58.69g) = 1.303 mol Ni
1.0g Cr * (mol/52.0g) = 0.019 mol Cr
22.5g W * (mol/183.84) = 0.122 mol W
Total moles = 1.345 + 0.019 + 0.122 = 1.444 moles
Therefore, the molar ratio of Ni, Cr and W in the alloy would be as follows:
1.303 mol Ni / 1.444 total moles = 0.90 = “a” of the claimed Formula (2).
0.019 mol Cr / 1.444 total moles = 0.01 = “c” of the claimed Formula (2).
0.122 mol W / 1.444 total moles = 0.08 = “b” of the claimed Formula (2).
Therefore, Yoshitake discloses coatings of the claimed Formula (2):
NiaWbCrcCodMe
wherein:
a = 0.90, which falls within the claimed 0.9≤a˂1;
b = 0.08, which falls within the claimed 0≤b≤0.8;
c = 0.01, which falls within the claimed 0≤c≤0.7;
d = 0, which falls within the claimed 0≤d≤0.7; and
e = 0, which falls within the claimed 0≤e≤0.8.
Given that the alloy coating of Yoshitake is substantially identical to the coating material as used in the present invention, as set forth above, it is clear that the alloy coating would inherently have “minimized impurities” as presently claimed.
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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
While there is no disclosure that the alloy coating composition is “for coating a kiln for preparing an active material” as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for coating a kiln for preparing an active material, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 3, Yoshitake is relied upon as disclosing the limitations of claim 2 as explained above, wherein the exemplified alloy coating has molar ratio of Ni, Cr and W, as calculated above (Yoshitake; [0031-0032]):
1.303 mol Ni / 1.444 total moles = 0.90 = “a” of the claimed Formula (2).
0.019 mol Cr / 1.444 total moles = 0.01 = “c” of the claimed Formula (2).
0.122 mol W / 1.444 total moles = 0.08 = “b” of the claimed Formula (2).
Therefore, Yoshitake discloses coatings of the claimed Formula (2):
NiaWbCrcCodMe
wherein:
a = 0.90, which falls within the claimed 0.9≤a˂1;
b = 0.08, which falls within the claimed 0≤b≤0.5;
c = 0.01, which falls within the claimed 0≤c≤0.2;
d = 0, which falls within the claimed 0≤d≤0.2; and
e = 0, which falls within the claimed 0≤e≤0.5.
Regarding claim 4, Yoshitake is relied upon as disclosing the limitations of claim 2 as explained above, wherein the exemplified alloy coating has molar ratio of Ni, Cr and W, as calculated above (Yoshitake; [0031-0032]):
1.303 mol Ni / 1.444 total moles = 0.90 = “a” of the claimed Formula (2).
0.019 mol Cr / 1.444 total moles = 0.01 = “c” of the claimed Formula (2).
0.122 mol W / 1.444 total moles = 0.08 = “b” of the claimed Formula (2).
Therefore, Yoshitake discloses coatings of the claimed Formula (2):
NiaWbCrcCodMe
wherein:
a = 0.90, which falls within the claimed 0.9≤a˂1;
b = 0.08, which falls within the claimed 0≤b≤0.5;
c = 0.01, which falls within the claimed 0≤c≤0.15;
d = 0, which falls within the claimed 0≤d≤0.15; and
e = 0, which falls within the claimed 0≤e≤0.2.
Regarding claim 5, Yoshitake is relied upon as disclosing the limitations of claim 2 as explained above, wherein the exemplified alloy coating has molar ratio of Ni, Cr and W, as calculated above (Yoshitake; [0031-0032]):
1.303 mol Ni / 1.444 total moles = 0.90 = “a” of the claimed Formula (2).
0.019 mol Cr / 1.444 total moles = 0.01 = “c” of the claimed Formula (2).
0.122 mol W / 1.444 total moles = 0.08 = “b” of the claimed Formula (2).
Therefore, Yoshitake discloses coatings of the claimed Formula (2):
NiaWbCrcCodMe
wherein:
a = 0.90, which falls within the claimed 0.9≤a˂0.95;
b = 0.08, which falls within the claimed 0.05≤b≤0.3;
c = 0.01, which falls within the claimed 0≤c≤0.1;
d = 0, which falls within the claimed 0≤d≤0.1; and
e = 0, which falls within the claimed 0≤e≤0.2.
Regarding claim 6, Yoshitake is relied upon as disclosing the limitations of claim 2 as discussed above.
Regarding claim 6, the claims further limits the alloy or compound which is an optional embodiment of claim 2 (i.e., “wherein M is at least one element … or an alloy or compound” and /or when e=0), and therefore not required. As such, claim 6 is rejected based on identical/substantially identical reasons as claim 2.
Response to Arguments
1) Applicant’s arguments, see Remarks, filed 01/20/2026, with respect to the rejection of claims 2-6 under 35 USC 102(a)(1) over Zhong have been fully considered and are persuasive. Specifically, the claims as presently amended require that the nickel content must be 90 mole% of higher. Therefore, the rejection has been withdrawn.
2) However, upon further consideration and search due to Applicant’s claim amendments, a new ground of rejection is made in view of Yoshitake.
3) Regarding the preamble and “direct contact” limitation, Applicant argues:
“According to MPEP § 2111.02, a preamble limits the claim if it is ‘necessary to give life, meaning, and vitality’ to the claim, or if the intended use results in a structural difference between the claimed invention and the prior art.
In this case, the preamble, now reinforced by the body limitation ‘wherein the surface directly contacts the active material being prepared’ defines the core technical environment that dictates the material's necessary properties.
1. Technical Problem: The invention solves the problem of impurity (Fe, Cr) elution from the kiln wall into the active material powder during high-temperature firing (>6000C). This is a chemical contamination issue, not a mechanical wear issue.
2. Structural implication: To function in ‘direct contact’ with reactive lithium salts at >800C, the coating must possess specific thermal and chemical stability properties (e.g., phase stability, density, lack of reactivity).”
Remarks, page 8 of 11.
This argument is not deemed persuasive because the alloy coatings of Yoshitake directly contact the surface of the coated substrate. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Fe and Cr impurity elution from the kiln wall into the active material powder during high-temperature firing >600oC, and direct contact with reactive lithium salts at >800oC), are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
2) Further, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
3) Lastly, comparative or unexpected results cannot be used to overcome a rejection under 35 U.S.C. 102(a)(1). The alloy coatings of Yoshitake are structurally identical to those as claimed in that they result in an alloy coatings meeting Formula (2) as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Okuno et al, JP 2012-124012A, discloses a plating alloy comprising nickel and tungsten (Abstract). A plating alloy comprising 87 mass% nickel and 13 mass% tungsten is exemplified (page 6, lines 36-39 of translation), equating to molar ratios of Ni and W in formula (2) as claimed of a=0.954 and b=0.045.
Patel, US 4263353, exemplifies various nickel powder coatings, such as Test No. (8) which comprises 5 wt% WSi2 and 95 wt% Ni (col. 6, line 56-col. 7, line 20).
Hui, US 6200450 B1, discloses an alloy deposited with electrodeposition fluid, the alloy comprising 65-70wt% Ni, 10-30wt% Fe, 5-10wt% W, and 1-3wt% P (col. 3, lines 39-49).
KR 2005-0063985 A, discloses a nickel-tungsten allow coating comprising 95-99.5 weight% nickel and 0.5-5.0 weight% tungsten.
JP 11290996A1, discloses an inner surface of a cast molding coated with a nickel alloy comprising in wt%: 70-90% Ni, 5-20% Co, 1-10% W and 1-10% Fe.
CN 1353214A, discloses a plating alloy for the working surface of an ironmaking blast furnace tuyere, comprising 55-95% Ni, 1-8% Fe, 1-25% Co and 1-20% W.
CN 104152957 A, discloses a Ni-Fe-W ternary alloy layer. Various Ni-Fe-W alloy plating layers are disclosed (see para. [0018-0022] of translation, and Table on page 5 of CN pub).
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.
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/CDL/Examiner, Art Unit 1732
/STEFANIE J COHEN/Examiner, Art Unit 1732 4/1/26