DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 2, and 4-22 are pending. Claim 3 has been canceled.
Claim Objections
Claims 15 and 22 are objected to because of the following informalities:
The limitation “b) the fluoride composition of the general formula” in claims 15 and 22 should be amended to recite “b) the fluoride composition is represented by the general formula”.
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 9-22 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.
The independent claims 9, 12, and 16 recite the limitation “A1-2MM’F6-7”, but fail to define A, M, and M’.
Therefore, it is not clear what is the joint inventor claiming as the invention in claims 9, 12, and 16.
Claims 10, 11, and 13-15 are rejected as being dependent on the rejected claim 9, and claims 17-22 are rejected as being dependent on the rejected claim 16.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 depends on claim 1 and recites the limitation “wherein the fluoride composition comprises one of: mechanochemical materials, ceramic materials, and hydrothermal materials”.
However, the independent claim 1 has been amended to recite “the fluoride composition comprises mechanochemical materials”.
Therefore, claim 4 fails to further limit the subject matter in claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that forms 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.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raju et al. (‘X-ray photoelectron spectroscopic studies of flux grown CsMnFeF6 single crystals”).
With regard to claim 2, Raju et al. teach CsMnFeF6 (abstract), wherein the compound of formula CsMnFeF6 has Cs+, Mn2+, and Fe3+ each linked to fluorine (see the fourth paragraph in the left column, page 1706).
CsMnFeF6 is a compound of formula A1MM’F6, wherein A is Cs+, M is Mn2+, and M’ is Fe3+.
The oxidation state of Mn2+ and Fe3+ are such that CsMnFeF6 is charge balanced.
Par.0005 of the instant application defines that composition (a) of formula AMIIMIIIF6, wherein A may be Cs, MII may be Mn, and MIII may be Fe is configured for fluoride ion intercalation.
Therefore, absent a record to the contrary, CsMnFeF6 of Raju et al. is configured for fluoride ion intercalation and the reversible (de) insertion of F-ions dominates the electrochemistr of the compound
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112. I. SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY).
Allowable Subject Matter
Claims 1 and 5-8 are allowed.
The prior art does not teach the fluoride compositions in claim 1 of the instant application.
Response to Arguments
Applicant’s arguments with respect to claims 1, 2, and 4-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner would like to note that:
-the objection to the abstract is withdrawn after the filing of a new abstract;
-the objection to the drawing is withdrawn after the filing of the replacement fig.2A;
-the rejection of claims 1-22 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn after the applicant’s amendments to claims 1, 9, 12, 15, 16, 18, and 22;
-the rejection of claims 1, 2, and 6 under 35 U.S.C. 102(a)(1) as being anticipated by Raju (“Characterization of modified pyrochlores CsMFeF6 (M=Mn, Co, and Zn)”) is withdrawn after the applicant’s amendment to claim 1;
-the rejection of claims 1, 7, and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Euchner et al. (“Unlocking the potential of weberite-type metal fluorides in electrochemical energy storage”) is withdrawn after the applicant’s amendment to claim 1; and
-the rejection of claims 3 and 4 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Raju (“Characterization of modified pyrochlores CsMFeF6 (M=Mn, Co, and Zn)”) is withdrawn after the applicant’s amendment to claim 1.
However, new grounds of rejection for claims 2, 4, and 9-22 are presented in paragraphs 4-9 above.
Conclusion
Applicant's amendment necessitated the new grounds 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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/ANCA EOFF/Primary Examiner, Art Unit 1722