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 .
The Applicant’s amendments were received on 11/3/2025. Claim 1 and 2 are amended. Claims 5-8 are new.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/4/25 is considered by the examiner.
Specification
The disclosure objection is maintained.
The disclosure is objected to because of the following informalities: “j” and “i” are not further define.
In addition, the disclosure is objected to because of the following informalities: “y is less than 2,” “j is less than 2,” “y+j is less than 2,“ “z is less than 1,” “i is less than 1, and “z+i is less than 1,” “x is 1 or 2,” “y is 0, 1, or 2,” “w is 0 or 1” and “z is 0 or 1” are not supported in Applicant’s specification.
Appropriate correction is required without adding new matter.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, on claims 1-4 are maintained.
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.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitation “j” is not defined since it is unknown what “j” is. The Applicant’s discloses a formula but how one of ordinary skill in the art find “j” is unknown. Appropriate corrections and further clarification is required.
Claims depending from claims rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph are also rejected for the same.
Claims 1-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The upper limit of j is not defined in j≥0 The subject matter of a claim must still have definite boundaries, no matter how broad or narrow. The problem arising from the lack of limits on subscripts would not be undue breadth, but that the actual extent of this breadth cannot be determined. While a skilled artisan may be able to select some values for the subscript, the artisan would not know what the limits or boundaries of the possible values are. Appropriate corrections and further clarification is required.
Claims depending from claims rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph are also rejected for the same.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The limitation “i” is not defined since it is unknown what “i” is. The Applicant’s discloses a formula but how one of ordinary skill in the art find “i” is unknown. Appropriate corrections and further clarification is required.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The upper limit of i is not defined in i≥0 The subject matter of a claim must still have definite boundaries, no matter how broad or narrow. The problem arising from the lack of limits on subscripts would not be undue breadth, but that the actual extent of this breadth cannot be determined. While a skilled artisan may be able to select some values for the subscript, the artisan would not know what the limits or boundaries of the possible values are. Appropriate corrections and further clarification is required.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “x is less than 2” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “y is less than 2” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “j is less than 2” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “y+j is less than 2” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “w is less than 1” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “z is less than 1” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “i is less than 1” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “z+i is less than 1” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “x is 1 or 2” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “y is 0, 1, or 2” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “w is 0 or 1” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “z is 0 or 1” is not supported in Applicant’s specification. Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claims 1-4 are withdrawn because the Applicant amended the claims.
Claim Rejections - 35 USC § 102
As best understood, the rejections under 35 U.S.C. 102(a)(1) as being anticipated by Morikawa et al., on claim 1 has been maintained. The rejection is modified in view of the Applicant’s amendments.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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 Morikawa et al. (EP1205244).
Regarding claim 1, the Morikawa et al. reference discloses a known component comprising fibrous, rutile, an oxide including an oxygen atom, a nitrogen atom, and a transition metal atom, wherein the transition metal atom is at least one selected from the group consisting of a titanium atom, a tantalum atom, a niobium atom, and a zirconium atom, the fibrous rutile-type oxide is represented by a chemical formula MOXNy, where the transition metal atom is represented by M, and x in the chemical formula satisfies the following: x=2-(y+j) (j≥0) (P10).
It is noted that the claim limitation “of the catalyst for the fuel cell” are “intended” use limitations and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Response to Arguments
Applicant's arguments filed 11/3/2025 have been fully considered but they are not persuasive.
The Applicants argue, “For clarity, "wherein" has been added to claims 1 and 2 to make it clear that the definition of j in claim 1 is (j > 0) and the definition of i in claim 2 is (i > 0). Therefore, variables j and i are defined.”
The variable of “i” and “j” aren’t define in how one of ordinary skill would find “j” and “i” to even understand what the maximum limit would be. Thus, the rejection are maintained.
The Applicant’s argue, “As described in paragraphs [0024] and [0025], the fibrous catalyst 21 is a rutile- type metal oxide in which a part of the oxygen atoms are replaced with nitrogen atoms. For example, when the transition metal atom of the catalyst is titanium, in the chemical formula TiOXNy, the valence of Ti is +4, that of O is -2, and that of N is -3. In TiOXNy, only a part of the oxygen atoms are replaced with nitrogen atoms, and not all of them.”
However, that is assuming that Ti has a valence of -4 for x to be -2 and potentially for N is -3. It can be possible that Ti can be valence of -3 or even 2p-3/2 or even TiO6-xNx for rutile oxides, for example. The Applicants have to provide, specifically where to find the valence of Ti, O and N from Applicant’s specification for the Examiner to consider these arguments. Otherwise, since it is unknown if Ti even comprises a valence of -4 from Applicant’s specification, these arguments are moot.
The Applicants argue, “Paragraph [0025] further states that "a part of the oxygen atoms is removed to eliminate the charge imbalance caused by the replacement of oxygen atoms with nitrogen atoms."
Since the valence of O is -2 and that of N is -3, in TiOXNy, charge balance can be achieved only when x is greater than y (i.e., x > y) and x is less than 2. However, that is only assuming that Ti comprises a valence of -4 which isn’t supported. Again, it can be possible that Ti can be valence of -3 or even 2p-3/2 or even TiO6-xNx for rutile oxides, for example. In these examples, x>y but one cannot assume that O can be less than 2 for TiO6- xNx since it appears to state that O can equal to 2 or more.
The Applicants argue, “Accordingly, it is apparent that x corresponds to the number obtained by subtracting the sum of y and j (which compensates for the charge imbalance) from 2, i.e., x 2 -(y +7). It is also evident that x, y, and j are each less than 2, and that (y +j) is less than 2.”
However, there is no evidence that Applicant’s specification discloses x, y, or j is less than 2. Therefore, these arguments are moot.
The Applicants argue, “As described in paragraphs [0028] and [0029], another example of the fibrous catalyst 21 is a rutile-type metal oxide in which a part of the oxygen atoms are replaced with nitrogen atoms, and a part of the transition metal atoms are replaced with phosphorus atoms. For example, when the transition metal atom is titanium, in the chemical formula TiwOxNyPz, the valence of Ti is +4, and that of P is +5. In TiWOXNyPz, only a part of the titanium atoms are replaced with phosphorus atoms, and not all of them.
Paragraph [0025] also states that "a part of the oxygen atoms is removed to eliminate the charge imbalance caused by the replacement of oxygen atoms with nitrogen atoms." Since the valence of Ti is +4 and that of P is +5, charge balance in TiwOXNyPz can be maintained only when w is greater than z (i.e., w > z) and w is less than 1.”
Actually, in Paragraph 31, it states that 0.1≤z≤2 and w is 1, then z can be higher than w. Again, there are no sufficient evidence to support the Applicant’s arguments. Therefore, these arguments are moot.
Applicant argues, “Accordingly, it is apparent that w corresponds to the number obtained by subtracting the sum of z and i (which compensates for the charge imbalance) from 1, i.e., w 1-(z+i). It is also evident that w, z, and i are each less than 1, and that (z +i) is less than 1.
Therefore, a person of skill in the art would understand the upper limit of j and i in the specification and Applicant requests reconsideration of the rejection under 35 U.S.C.112(a). “
Again, there are no sufficient evidence to support the Applicant’s arguments. Therefore, these arguments are moot.
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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/Helen Oi K CONLEY/ Primary Examiner, Art Unit 1752