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 .
Applicant's election with traverse of Group IV claims 1, and 18-19, and Species A in the reply filed on 10/31/2025 is acknowledged. The traversal is on the ground(s) that there is not an undue burden of search. This is not found persuasive because the different inventions require different fields of search and different search considerations. Note – claim 2-4, and 15-17 drawn to Species A are withdrawn because they fall under a non-elected invention Group II. Claims 2-4, and 15-17 may be rejoined when generic claim 1 is in condition for allowance. (See MPEP 821.03). Thus, claims 1, and 18-19 are examined herein.
The requirement is still deemed proper and is therefore made FINAL.
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 1, and 18-19 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.
In claim 1, each of the phrases, “the pore structure”, “the content of the micropores”, “the content of the mesoporous”, “the specific surface area”, “the molar ratio”, “the chalcogen”, “the chemical formula” lack antecedent basis in the claim.
In claim 1, line 11, the phrase “y, m, n≥ 0” is indefinite because it is unclear if each of y, m, and n are each ≥0 or the combination of y, m, and n is ≥0. For the purpose of examination this feature is understood to mean that each of y, m, and n are greater or equal to zero.
In claim 1, the scope of the term “i.e.” is indefinite.
In claim 18, the phrase “the reaction of acetylene hydrochlorination to synthesize vinyl chloride” lacks antecedent basis in the claims.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saldanha “Generalized one-pot synthesis of copper sulfide, selenide-sulfide, telluride-sulfide nanoparticles”.
Regarding claim 1, Saldanha teaches a process of making a copper sulfide or copper chalcogen (Abstract). Saldanha teaches the formation of Cu2S, Cu1.83Se0.43S0.57, and Cu1.74Te0.53S0.47 each of which meet the conditions of the formula recited in instant claim 1.
Saldanha does not expressly state that the pore structure of the porous intermetallic compound includes micropores and mesopores, and the micropores and mesopores are distributed in disorder, wherein the content of the micropores accounts for 6-68%, and the content of mesopores accounts for 32-92%; the specific surface area of the porous intermetallic compound is 50-1600 m²/g. However, “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The material of Saldanha is substantially similar to the claimed product because they are made of the same material and the images of shown in Figure 1 of Saldanha appear to show disorderly dispersed micropores and mesopores within the proportions recited in instant claim 1 (See Figure 1, light gray empty spaces appear to be pores). The porous structures would inherently exhibit a surface area within the claimed range.
Allowable Subject Matter
Claims 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or suggest the cumulative features of claims 18-19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731