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 .
Status of Application
Claims 1-4, 6, 8 and 10-17 are pending and presented for examination. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 27 April 2026 has been entered.
The Declaration under 37 C.F.R. 1.132 to Kumar dated 26 April 2026 (hereinafter, “Kumar Declaration at __”) is acknowledged and entered.
The Kumar Declaration is considered persuasive for showing non-obviousness of instant claim 1 by setting forth that none of the primary references detail explicitly or implicitly a solid free flowing particle that is pyrolyzed via flame or plasma (Kumar Declaration at 2).
However, the Kumar Declaration makes broad accusations regarding the product-by-process aspects of instant claim 15; That there is a structural difference due to “absence of calcination”, “rapid palsma crystallization”, and “reduced grain boundaries and defect structure” (Kumar Declaration at 4). However, the Kumar Declaration does not actually state what these differences are, i.e., a showing that the products are actually different. Mere accusations of such are not evidence to encourage withdrawal of the product-by-process rejections. Furthermore, claim 1 is also drawn to using flames, not just plasma, so it also cannot be used to determine if such a difference exists. Accordingly, the prima facie burden still remains on Applicants.
Response to Arguments
Applicant’s remarks dated 27 April 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claims 1, 2, 4, 5, 7, 8, 11, 12 and 16 under 35 U.S.C. 103 over Ernst in view of Hampden-Smith and Sunkara is WITHDRAWN Over the instant amendment requiring a free-flow solid particle, drying to <40wt% moisture, without calcination, as Ernst requires calcination, and none of the references are drawn to solid free flowing particles that are jet-milled and then exposed to plasma/flame pyrolysis as an aerosol is not a solid but is still in the “droplet” state which instant claim 1 does not permit (Remarks at 5-6).
The dependent rejection of claim 10 under 35 U.S.C. 103 over the same in further view of Hou is WITHDRAWN as the base claim was withdrawn. The dependent rejection of claims 10-14 over the same in further view of Li is WITHDRAWN as the base rejection was withdrawn.
The rejection of claims 1-9, 15 and 16 under 35 U.S.C. 103 over Sunkara in view of Hampden-Smith and Sunkara-2 is WITHRAWN over the instant amendment for the same reasons as Ernst in view of Hampden-Smith and Sunkara, especially as Hampden-Smith is drawn to droplets not to solid and Sunkara-2 jet mills after pyrolysis (which is why the rejection of claim 15 is withdrawn as this would result in a different product). While the aerosol particle size of Sunkara is 1-100 microns, it is unclear if the final product would be such.
The dependent rejection of claim 10 under 35 U.S.C> 103 over the same in further view of Hou is WITHDRAWN as the base claim was withdrawn. The dependent rejection of claims 13 and 14 over the same in further view of Li is WITHDRAWN as the base rejection was withdrawn.
The rejection of claims 1-6, 8, 11, 12, 15 and 16 under 35 U.S.C. 103 over Holman in view of Sunkara is WITHDRAWN over the instant amendment as Holman jet-mills after crystallization of the oxides has occurred and to do it earlier would not be obvious to one of ordinary skill in the art as that would change the particle morphology (which is why claim 15 rejection is withdrawn as the products would differ in this combination).
The rejection of claim 15 under 35 U.S.C. 102(a)(1)/103 over Deng is MAINTAINED and updated below to reflect the instant amendment. Deng discloses particle sizes of 1-5 microns (Deng at [0035]) of a mixed metal oxide (Deng at [0073]). Applicants traverse the rejection arguing that Deng requires calcination (Remarks at 12), which is correct, but Applicants have not distinctly shown what affect the calcination has or any of the process steps have, vis a vis the final product of Deng. The same holds true for “rapid crystallization” and what “reduced grain boundaries and defect structures” actually are.
The rejection of claim 15 under 35 U.S.C. 102(a)(1)/103 over Iqbal is WITHDRAWN as claim 1 requires particle sizes of 0.1-10 microns and Iqbal is drawn to 20 microns.
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 1-4, 6, 8, 10-14, 16 and 17 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.
In claim 1 it is unclear if the particle size of 0.1-10 microns is only from the fluidization for exposure to the plasma or if it should be “exposure to the hydrocarbon flame or the oxygen plasma”, it is being treated as the latter for the purposes of compact prosecution. All claims depending from claim 1 are rejected due to the dependence therefrom.
Claim Rejections - 35 USC §§ 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 15 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Deng.
Regarding claim 15, Deng discloses Li-Ni-Mo mixed metal oxide particles having a diameter of 1-5 microns (Deng at [0035] & [0073]). While the claim requires the crystalline mixed metal oxides be made by the method of claim 1, this is a product-by-process limitation which means the claim is examined on the merits of the product not how it is made. While the product is claimed as dependent upon the process made, there is nothing to suggest that the instant product would have different properties, structure or aspects than that in the prior art, absent evidence to the contrary. Accordingly, at minimal one of ordinary skill in the art would find it obvious that prior art product and the instant product would have the same product aspects as that instantly claimed. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) also MPEP 2113, et seq. As shown supra the product is known.
Claim 15 is rejected under 35 U.S.C. 102(a)(1)/103 over “Flux-mediated crystal growth of metal oxides: synthetic tunability of particle morphologies, sizes, and surface features for photocatalysis research” to Boltersdorf et al. (hereinafter, “Boltersdorf at __”).
Regarding claim 15, Boltersdorf discloses a crystalline mixed metal oxide (NaTaO3, Boltersdorf at 2231 R col col) having a particle size of 0.27 microns (Id.). While the claim requires the crystalline mixed metal oxides be made by the method of claim 1, this is a product-by-process limitation which means the claim is examined on the merits of the product not how it is made. While the product is claimed as dependent upon the process made, there is nothing to suggest that the instant product would have different properties, structure or aspects than that in the prior art, absent evidence to the contrary. Accordingly, at minimal one of ordinary skill in the art would find it obvious that prior art product and the instant product would have the same product aspects as that instantly claimed. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) also MPEP 2113, et seq. As shown supra the product is known.
Allowable Subject Matter
Outside of the 35 U.S.C. 112(b) rejection of claims 1-4, 6, 8, 10-14, 16 and 17, the claims would otherwise be allowable, especially in light of how the Office is construing instant claim 1.
Ernst is the closest piece of prior art and fails for reasons already of record laid out above. Newly cited Boltersdorf is not drawn the same method of making. Hampden-Smith is drawn to liquid flame spray pyrolysis of an aerosol, not a solid particle.
Conclusion
Claims 1-4, 6, 8 and 10-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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, Curtis Mayes can be reached at 571-272-1234. 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.
RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
Prosecution Insights