DEVICE AND METHOD FOR UTILIZING INTERCALATION ZINC OXIDE WITH AN ELECTRODE
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
Applicant’s election without traverse of Group 1, Species 1 (claims 1-6 and 8-10) in the reply filed on 3/27/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 5/3/2023 and 6/22/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “sensor” and “microcontroller” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: amend “zincoxide” to “zinc oxide”. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: amend “thanzero” to “than zero”. Appropriate correction is required.
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a compound that enables zinc oxide reactions, does not disclose the type of compound of provide an example. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
This is a scope of enablement rejection. One of ordinary skill in the art would have to engage in undue experimentation in order to make and use applicants claimed invention. See, In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Circ. 1988); see also, MPEP § 2164.01. MPEP 2164.01(a) sets forth the following factors, summarized from In re Wands, which should be considered when determining whether the claimed invention would require undue experimentation. The factors are as follows:
(A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; (H) and the quality of experimentation needed to make and use the invention based on the content of the disclose.
The factors are addressed in order. As to factor A, the claim broadly recites zinc oxide reagent material comprises a zinc oxide intercalated with a compound that enables zinc oxide reactions. No specific examples of the workability of any other compound capable of these reactions are given. Therefore, this factor militates against a finding of enablement.
As to factors B and E, the field of material science is an unpredictable art. Thus the formulation of compounds containing different elements from those that have been optimized experimentally may present different problems. In addition, the formulation of compounds requires different chemical formulations comprising at least two or more materials. It is not as simple as mixing each component into a beaker. As such one of ordinary skill in the art would not know what problems might arise when formulating an active material using the elements for which applicants have not presented experimental data to support. This factor militates against a finding of enablement.
As to factor C, the closest prior arts of record are vast being that the limitation of “a compound that enables zinc oxide reactions” is itself a broad limitation. As such, this factor militates against finding of enablement.
As to factor D, the level of ordinary skill in the art would be a person holding a bachelors degree in chemical engineering, material science, or chemistry. This factor does not weigh for or against a finding of enablement.
As to factors F and G, the applicant’s specification provides no examples of a compound that enables zinc oxide reactions. While claim 2 defines this compound with “A”, claim 3 goes on to define A being selected from H, Li, Na, K, Cs, Al, In, Mg, Ca or any combination thereof. However, H, Li, Na, K, Cs, Al, In, Mg, Ca are not compounds at all when they are merely elemental. There can be “combinations” but the specification does not disclose what is being combined and how much (See rejection under 35 USC 112(b) below).
As to factor H, because of the unpredictability of the material science field, one of ordinary skill in the art would have to perform experimentation on each and every combination of the thousands possible. Such a degree of testing is undue experimentation. This factor militates against a finding of enablement.
Claims 2-6 and 8-10 are also rejected under 35 USC 112(a) for their dependence on claim 1.
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 1-6 and 8-10 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 1 discloses wherein the zinc oxide reagent material comprises a zinc oxide intercalated with a compound that enables zinc oxide reactions. However, the specification does not disclose what elements/materials make up this compound. Claims 2 and 3 label this “compound” as “A” in the claimed formula, wherein A is selected from H, Li, Na, K, Cs, Al, In, Mg, Ca or any combination thereof.
However, H, Li, Na, K, Cs, Al, In, Mg, Ca are not compounds by definition being that for anything to be a compound must comprise at least two elements. While claim 3 discloses “or any combination thereof”, it does not address this discrepancy being that 1) an actual combination of H, Li, Na, K, Cs, Al, In, Mg, Ca is not disclosed and 2) a combination of these elements would most likely not form a compound.
Claim 1 also discloses wherein the second electrode comprises a counter-electrode or a reference electrode electrically coupled to one or more electronics, wherein the one or more electronics are configured to control electrochemical voltage of the current collector and the zinc oxide reagent material.
While the specification and drawing disclose one electronic capable of controlling electrochemical voltage (i.e. the potentiostat), there is absolutely no disclosure or explanation of an additional electronic. What other electronic along with the potentiostat is coupled to the second electrode?
Claim 2 further discloses wherein the zinc oxide reagent material has a chemical composition provided by the formula: ZnxOyAz where A is the compound that enables zinc oxide reactions, wherein Z is equal to or greater than zero, and X and Y are non-zero numbers.
However, A can be zero which therefore contradicts claim 1. Further, there is no disclosure in the specification for how much A can be present as there is no appropriate range given. Further, X and Y being “nonzero” is indefinite because this is 1) not an appropriate range as well and 2) can include negative integers which would make no scientific sense.
Claim 8 discloses a chemical composition or microstructure of the zinc oxide is configured to provide reactions at a specific electrochemical voltage.
However, the specification does not disclose how the composition or microstructure is configured to perform these reactions. How can the zinc oxide change its composition or structure?
Claims 4-6, 9, and 10 are also rejected under 35 USC 112(b) for their dependence on claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shon et al. (US 2013/0078517 A1) and Valdez et al. (J. Am. Chem. Soc. 2018, 140, 8924−8933).
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 April 14th, 2026
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