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
Newly submitted claims 17-19 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The method of making uranium triperoxide is distinct from the originally claimed actinide metal peroxide. The “actinide metal peroxide” appears to be drawn to compositions that include an actinide element with other metal elements, such as lithium, to form a composite peroxide material (Specification, page 12), while the process of claim 17 is drawn to specifically require uranium triperoxide without other metals.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 17-19 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 1-7, 10-11, 13-16, and 20-21 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 is too vague for the person having ordinary skill in the art to ascertain the appropriate scope of the claim.
In claim 1, the phrase “actinide metal peroxide” is indefinite because it is unclear whether the claims are draw to a method of making an actinide metal peroxide, a complex that contains some actinide and some peroxide, or an ionic species of and actinide peroxide. The examples of the specification do not clearly disclose the chemical make up of the products produced by the use of lithium or sodium peroxide nor the chemical make up of the dry and liquid-assisted grinding methods (See examples 1 and 2). Thus, the scope of which compounds are included as “actinide metal peroxide” is indefinite.
In claim 1 the phrase “under conditions that provide the actinide metal peroxide” is indefinite because it fails to include necessary process steps that would define the scope of the “actinide metal peroxide” as discussed above. The description provides different methods such as dry and liquid-assisted grinding, which provides different products (See Examples). Thus, the scope of which process steps are included in the phrase “under conditions that provide the actinide metal peroxide” is indefinite.
Also, in claim 20, the phrase “under mechanochemistry conditions that provide the actinide metal peroxide” is indefinite because it fails to include necessary process steps that would define the scope of the “actinide metal peroxide” as discussed above. The description provides different methods such as dry and liquid-assisted grinding, which provides different products (See Examples). Thus, the scope of which process steps are included in the phrase “under mechanochemistry conditions that provide the actinide metal peroxide” is indefinite.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant argues that the phrase “actinide metal peroxide” is not indefinite because a Google search provides a definition of, “Actinide metal peroxides are a class of chemical compounds formed between actinide metals and the peroxide ion”. This is not persuasive because a search of the internet by the Examiner did not produce the same definition. Also, the phrase “actinide metal peroxide” remains unclear because it is unclear what the scope of the term covers. For example, Applicant’s provided definition in the response of 11/24/2025 appears to include compounds that consist of actinide metals and peroxide. However, the specification shows that the chemical compound produced by the instant process may be a complex of actinide metals, other metals, oxides, hydroxides and peroxides, see for example page 12 lines 5-10. It remains unclear whether the claimed compound is only actinide and peroxide or a broader compound containing metals other than actinide and other states, such as hydroxides and oxides.
Furthermore, it unclear whether the term “metal” in “actinide metal peroxide” refers to the actinide metal or a metal other than the actinide.
Applicant also argues that the phrase “under conditions that provide the actinide metal peroxide” is definite because the claim requires “contacting”. In response, this phrase remains indefinite because the conditions of the “contacting” change the composition of the peroxide end product and it remains unclear what end product is covered by the phrase “actinide metal peroxide”
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 JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES A FIORITO/Primary Examiner, Art Unit 1731