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 .
Status of Application
Claims 1-19 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 8/27/2026 have been fully considered but they are not persuasive. The Applicant argues that the claims comply with the written description requirement. However, the Examiner disagrees and maintains the rejections for the reasons as set forth below
First, as noted by Applicant in their Remarks, the disclosure may not specifically use the term “shape-defining”. The Examiner agrees that the original disclosure fails to recite this term.
Applicant argues that the original disclosure provides written description support where it recites “In line with this, it is preferred that (also) the cavity of the container is spherical in shape”. However, the Examiner disagrees that this clearly shows the container’s shape-defining role. Just because the shape of the container is the same as the shape of the final product does not necessarily mean that the container is what is defining the shape of the final product. Further, as noted in that citation, it is preferred that the cavity of the container is the same shape as the final product, this also implies that the final product can still be spherical even if the cavity of the container is a different shape, which supports the position that the container is not “shape-defining”.
Applicant points to the dimensional relation between the container and the compact and suggests this further demonstrates the container is designed to accommodate the spherical powder compact and highlights the shape-defining feature of the container. However, as noted above, just because the dimensions coincide (the container is designed to accommodate the spherical powder compact) that doesn’t necessarily imply that the container itself is what is defining the shape.
Applicant argues that the terms “delimit” and “bound” are synonymous with the term “define”. The Examiner would agree that the two half-calottes define the shape of the cavity. However, the Examiner disagrees that the shape of that cavity would then necessarily be “shape-defining” for the final shape of the resulting product.
Applicant argues that the entire intermediate space is displaced by coating liquid and therefore must be shape-defining. However, the Examiner disagrees and notes that Edwards teaches a coating liquid that fills the entire space within a perforated cage/container but Edwards final product is not defined by the shape of the cage. Therefore, the Examiner maintains that the claims fail to comply with the written description requirement.
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.
1. Claims 1-19 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 recites “providing a shape-defining container”. However, the original disclosure fails to support this new limitation. A thorough search of the disclosure failed to return the term “shape-defining”. Additionally, this feature is not inherently shown in Applicant’s disclosure and the sections referenced by Applicant to support this feature only supports that the cavity of the container is preferably spherical when the powder compact is spherical. However, this does not support the more narrow language that the container actually defines the shape of the resultant product. Therefore, claim 1 fails to comply with the written description requirement. Claims 2-19 depend from claim 1 and fail to comply with the written description requirement for the same reasons.
Conclusion
Claims 1-19 are pending.
Claims 1-19 are rejected.
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 ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
September 6, 2026Primary Examiner, Art Unit 1717
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