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 .
Election/Restrictions
Claims 1, 3-12, and 20-21 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 13-19, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 19 August 2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Response to Amendment
The Amendment filed 26 June 2026 has been entered. Claim 13 is amended. Accordingly, claims 13-19 remain pending in the application.
Claim Objections
Claims 10-12 are objected to because of the following informalities:
Claim 10, lines 3 and 5, "m2/g" should read “m2/g”.
Claim 11, line 2, recites "O2/g” should read “O2/g”.
Claim 12, line 3, recites "O2/g" should read “O2/g”.
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 13-19 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.
Claim 13, lines 10-12, recite “wherein in the aqueous solution, based on 100% by mole of total salts, the cerium salt is present in an amount of 80% to less than 100% by mole, and the zirconium salt is present in an amount of 60% to 99% by mole”. It is unclear how the total salts are 100% by mole, yet the cerium salt (80% to less than 100% by mole) and the zirconium salt (60% to 99% by mole) result in a total salts of greater than 100% by mole. It is not clear if the limitation “based on 100% by mole of total salts” is referring to the total of each respective salt or the additive total salts.
Claim 13 recites the limitation "the remaining part of the zirconium salt or the cerium salt" in lines 13-14. There is insufficient antecedent basis for this limitation in the claim. It is unclear what constitutes "the remaining part". It is not clear if the remaining part is the cerium salt and/or zirconium salt which was not added in step (a), or referring to something else entirely.
Claims 14-19 would be indefinite as they depend from an indefinite base and fail to cure the deficiencies of the base claim.
Allowable Subject Matter
Claims 1, and 3-12, and 20-21 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 13-19 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.
The following is an examiner’s statement of reasons for allowance:
See reasons for allowance in the Final Office Action mailed on 13 March 2026.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
The following is a statement of reasons for the indication of allowable subject matter:
Claims 13-19 would be considered allowable because they are dependent on claim 1.
Response to Arguments
Applicant's arguments filed 26 June 2026 have been fully considered but they are not persuasive.
Applicant argues the amendment regarding % by mole of salts is calculated based on the total moles of salts in the solution and the upper limit is "less than 100%", thereby eliminating the logical contradiction. Applicant further argues the mole percentages of each salt are separately calculated based on the total moles of salts rather than being additive.
However, it is still unclear how the total salts are 100% by mole, yet the cerium salt and the zirconium salt result in a total salts of greater than 100% by mole. It is not clear if this limitation is referring to the total of each respective salt or the additive total salts.
Applicant argues the zirconium salt and the cerium salt refer to the same salts previously introduce in paragraph (a), thereby providing clear antecedent basis.
However, it is unclear what constitutes "the remaining part". It is not clear if the remaining part is the cerium salt or zirconium salt which was not added in step (a), or referring to something else entirely.
Conclusion
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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/S.E.S./Examiner, Art Unit 1735
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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