ACTIVE ELECTRODE MATERIAL
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 .
Response to Amendment
In response to communication filed on 7/10/2026:
Claims 1, 30, and 31 have been amended; claim 11 has been canceled. No new matter has been entered.
Previous rejections under 35 USC 103 have been withdrawn due to amendment.
Previous rejections under 35 USC 112(b) have been upheld.
Response to Arguments
Applicant's arguments filed 7/10/2026 have been fully considered but they are not persuasive.
The Applicant discloses: “These features impose two different restrictions on the scope of M1, and both are required by the claims. In more detail, the first feature that "M1 is selected from one or more of P, B, Ti, Mg, V, Cr, W, Zr, Mo, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, Ta, and Zn" (the "broad" recitation, as termed by the Patent Office) provides a closed list of elements for M1. In other words, M1 consists of elements selected from the "broad" list. The second feature that "M1 comprises at least one of B, Ti, Mg, Cr, Zr, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, and Zn" (the "narrow" recitation) is an open list of elements for M1 and means that M1 must contain one of more of the elements in the "narrow" list but may also contain other elements. Together, the limitations mean that M1 must contain one or more of the elements in the "narrow" list but may also contain other elements from the "broad" list, and may not include elements outside of the "broad" list.
An example mixed niobium oxide that satisfies these features is sample E2:
Tio.o5Zro.o5W0.25Moo.65Nb12O33-δ (see Table El on page 34), where M1x = Tio.o5Zro.o5W0.25. All of Ti, Zr and W are in the "broad" list, thereby satisfying the first feature, and both Ti and Zr are also in the "narrow" list, thereby satisfying the second feature.
Thus, the scope of M1 is definite, and claim 1 (and its dependents) and claim 28 are definite.”
The Examiner respectfully traverses. M1 is still a broad limitation with a narrow limitation. M1 is at least one of P, B, Ti, Mg, V, Cr, W, Zr, Mo, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, Ta, and Zn, wherein M1 comprises at least one of B, Ti, Mg, Cr, Zr, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, and Zn. There is no indication in the claim language that “the limitations mean that M1 must contain one or more of the elements in the "narrow" list but may also contain other elements from the "broad" list, and may not include elements outside of the "broad" list.” This does not make cogent sense.
Further, E2 does not satisfy the formula as claimed. If M1x= Tio.o5Zro.o5W0.25 then what is M2 now that it has been removed from the claim? It is clear that M2=Mo but, as now amended, M1 can also be Mo (according to the broad limitation) but, according to the narrow limitation that is still present for M1, it also cannot be Mo. This also directly conflicts with amended claim 31 now.
Finally, there is no explanation in the specification for what the Applicant is claiming “different restrictions” for M1. Reading the claim language as presented, the Applicant is claiming different restrictions (independent of what the specification indicates) by narrowing M1 from a broader list of elements for M1 within the claim.
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, 3, 4, 7-9, 12, 15-17, 21-23, 25-26, and 28-31 are being 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.
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, claims 1 and 31 recites the broad recitation M1 is selected from one or more of P, B, Ti, Mg, V, Cr, W, Zr, Mo, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, Ta, and Zn and the claim also recites via new amendment wherein M1 comprises at least one of B, Ti, Mg, Cr, Zr, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, and Zn which is the narrower statement of the range/limitation.
In the present instance, claim 28 recites the broad recitation M1 is selected from one or more of P, B, Ti, Mg, V, Cr, W, Zr, Mo, Cu, Fe, Ga, Ge, K, Ni, Co, Al, Si, Hf, Ta, and Zn and the claim also recites via new amendment wherein M1 comprises at least one of Ti, Zr, Ge, Si, and Hf 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.
Further, in regards to claim 1, the now amended claim does not define a range for y or possible elements for M2. This is indefinite as both ranges are now open-ended for all real numbers in addition to metal elements.
Claims 3, 4, 7-9, 12, 15-17, 21-23, 25, 26, and 28-30 are also rejected under 35 USC 112(b) due to their dependence on claim 1.
Allowable Subject Matter
Claims 1 and 31 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 3, 4, 7-9, 12, 15-17, 21-23, 25, 26, and 28-30 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Tavares-Crockett can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 July 29th, 2026
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