DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election with traverse of Group 1, Claims 12-20, and species of a carboxylic acid filed on 11/21/2025 is acknowledged. The traversal is on the ground that the restriction is only proper if there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because for PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner.
Therefore, the restriction requirement based on the lack of unity analysis is still deemed proper and is made final. Accordingly, claims 14, 21-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/21/2025.
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. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. 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.
The abstract of the disclosure is objected to because it contains less than 50 words and does not describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 13 objected to because of the following informalities: “wherein an acid” should be “wherein the acid”. Appropriate correction is required.
Claim 15-16, 20 objected to because of the following informalities: a proper Markush format is “selected from the group”. Appropriate correction is required.
Claim 17 objected to because of the following informalities: “ratio of an acid” should be “ratio of the acid”. Appropriate correction is required.
Claim 18 objected to because of the following informalities: “a boiling temperature” should be “the boiling temperature” due to inherent antecedent basis. Appropriate correction is required.
Claim 19 objected to because of the following informalities: “the metal particles treated with acid” is suggested to be replaced with “the acid treated metal particles”. Appropriate correction is required.
Claim 19 objected to because of the following informalities: “recovering the metal particles after the step of washing the metal particles” is suggested to be replaced with “recovering the acid treated metal particles after the step of washing the acid treated metal particles”. Appropriate correction is required.
Claim 19 objected to because of the following informalities: “a step of mixing the metal particles…recovering the metal particles” is suggested to be replaced with “mixing the acid treated metal particles…recovering the acid treated metal particles”. Appropriate correction is required.
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.
Claims 12-13, 15-20 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 pre-AIA the applicant regards as the invention.
Claim 12 recites “according to a mass concentration of…., comprised between 0.001% and 45%.” What does it mean? For purposes of expediting prosecution, it is interpreted as “in an amount of 0.001% to 45% by weight of the acid treated metal particles based on the weight of the at least one polymer.
Claim 17 recites “with a mass ratio… comprised between 0.5 and 10.” What does it mean? For purposes of expediting prosecution, it is interpreted as “with a mass ratio of the acid relative to the metal particles between 0.5 and 10.
Claim 19 recites “further comprising the steps of”, the mixing steps in claim 19 and claim 12 are redundant.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 12-13, 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kerby (US 5,189,077).
Claims 12-13, 15-16, 19-20: Kerby teaches a method comprising acid treating stainless steel particles, washing the acid treated particles with water, recovering the treated particle, and mixing the acid treated particles with one polymer (10:15-55, examples 1-3). The mixture comprises 1-80wt% of the stainless steel particles and up to about 75wt% of polymer binder (claim 2). The amount of the stainless steel particles based on the weight of the polymer overlaps the claimed range. The acid used to treat the stainless steel particles can be acetic acid or propionic acid. (10:38-42).
Claim 17: Kerby does not teach the mass ratio of the acid and metal particles.
However, Kerby teaches the acid treatment would increase the ionization of the surface of the stainless steel, the formed ions are available for forming metal ion bridges with the polymer binder to improve the adhesion and strength of the material (10:15-25, 11:15-20). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of the acid through routine experimentation to balance between the ionization efficiency with cost, because the amount of the acid is a result effective variable where insufficient acid leads to reduced ionization efficiency, whereas excessive acid results in unnecessary waste. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 18: Kerby does not teach the acid treating is carried out at an elevated temperature.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the reaction temperature through routine experimentation to balance between reaction rate with cost, because the reaction temperature is a result effective variable where a higher reaction temperature accelerates the reaction but it also leads to higher energy use. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It is a known practice to control the reaction temperature below the boiling temperature of reagents to avoid the loss of reagents.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763