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 .
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.
Status of Application
Claims 1-29 (21-29 newly added via the instant amendment dated 5 November 2025 which is acknowledged an entered) are pending and presented for examination. Claims 17-20 were elected without traverse. As such claims 1-16 are withdrawn by the Examiner as they are non-elected. As such, THIS RESTRICTION REQUIREMENT IS MADE FINAL.
Claim Objections
Claims 20 and 21 objected to because of the following informalities: In claim 20 line 2 “m2/g” should read --m2/g--. In claim 21 “2nm” should read --2 nm--. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11638911 although the claims at issue are not identical, they are not patentably distinct from each other because the ‘911 claim has a particle size claimed which overlaps the instantly claimed “nanomaterial”. Furthermore, the instant claim discloses that the nanomaterial is made by a specific process (via a chelate) but that is a product-by-process limitation and it 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. Furthermore, the average pore size, total pore volume, and surface areas all overlap. It is noted that the titanate of ‘911 is a mixed metal oxide of at least two metal oxides.
Claim Rejections - 35 USC §§ 102 & 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 17-19, 21-23, 25 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Hierarchical flowerlike magnesium oxide hollow spheres with extremely high surface area for adsorption and catalysis” to Yang et al. (hereinafter, “Yang at __”). Claim 25 is evidenced by the attached Materials Project citation. Claims 17-19, 21-23, 26, 28 and 29 are also rejected under 35 U.S.C. 103 as being unpatentable over Yang for product-by-process aspects.
Regarding claims 17-19, 21, 24 and 26, Yang discloses a metal oxide nanomaterial (MgO nanoflowers, Yang at “Fig.42”) comprising:
At least one metal oxide formed by calcining a chelate of at least one metal precursor (magnesium glycolate is a metal chelate, 401 L col) wherein the metal oxide nanomaterial has a surface area of 343 m2/g (404 R col). The average pore size is between 2 and 50 nm (“Fig. 5” shows ~20 nm average). The total pore volume is 1.9 cc/g (402 L col).
Turning to claim 22, the material is mesoporous (“Fig. 5 caption”).
With respect to claim 25, MgO is known to be a cubic structure (see the Materials Project citation).
Regarding claims 28 and 29 (and to the extent the glycolate is not a chelating agent in claim 17 etc.), these claims all recite “formed by calcining a chelate of at least one metal precursor” which renders them a product-by-process claim which 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.
Claims 17-19, 21-25, 26, 28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 20140296062 to Suib et al. (hereinafter, “Suib at __”; cited by Applicants).
Regarding claims 17-19, 21, 23, 24 and 26 Suib discloses a metal oxide nanomaterial (“Fig. 20” which is drawn to ceria) which has a surface area of over 10 m2/g (“Table 6”, 179.4) with usage of a surfactant (P123 which can be a chelating agent to the extent it is not this aspect is product-by-process which is discussed supra). The average pore size is 13 nm ([0087]) and a pore volume of 0.22 cc/g ([0093]). While the claim recites “formed by calcining a chelate of at least one metal precursor” which renders them a product-by-process claim which 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 the chelate is calcined to form an oxide) as that instantly claimed. (See supra).
As to claim and 22, mesoporous materials have sizes between 2 and 50 ([0051]).
With respect to claim 25, the structure is cubic ([0132]).
Claims 28 and 29 are product-by-process claims as they recite “prepared by”.
Claims 17, 19, 21-23, 25, 26, 28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as be KR101466125 to Kim et al. (hereinafter, “Kim at __”; cited and provided by Applicants).
Regarding claims 17, 19, 21-23, 26, 28 and 29, Kim discloses a magnesium oxide nanomaterial which is mesoporous (Kim at [0008]) having an average pore size of 2.4 (Kim at “Table 1”) and a pore volume of 0.245cc/g. While the claim requires it be obtained by calcining a metal chelate this is a product-by-process limitation (just like the diol must be utilized in claims 28 and 29) and is examined on the merit of the product not how it is made).
As to claim 25, the crystalline structure is cubic ([0064]).
Claims 17-19 and 21-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 20170001172 to Zhao et al. (hereinafter, “Zhao at __”). Claim 25 is evidenced by Materials Property.
Regarding claims 17-19, 21, 23, 24, 26, 27, 28 and 29, Zhao discloses a nanomaterial (Zhao at [0032]) comprising a mixture of alumina, lanthania, ceria, and magnesia (Zhao at “Example 2”) which has a surface area of 166 m2/g and a pore volume of 1.19 cc/g (“Table 2”) and an average pore size of at least 20 nm ([0081]). While the claim requires it be obtained by calcining a metal chelate this is a product-by-process limitation (just like the diol must be utilized in claims 28 and 29) and is examined on the merit 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 the chelate is calcined to form an oxide) as that instantly claimed. (See supra).
As to claim 22, mesoporous materials have pore sizes between 2 and 50 nm which given the average the composite has.
With respect to claim 25, MgO is known to be a cubic structure (see the Materials Project citation).
Claims 17-19, 21-24, 26, 28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over CN108584998 to Liu et al. (hereinafter, “Liu at __”; cited and provided by Applicants). Claim 25 is evidenced by the Materials Project citation.
Regarding claims 17-19, 21-26, 28 and 29, Liu discloses a mesoporous magnesium oxide nanomaterial (7th paragraph of “Summary of the Invention” & 2nd paragraph of “Background of the Invention”) which has an average pore diameter of 2-10 nm, a surface area of 100-300 m2/g, and a pore volume of 0.5-1.5 cc/g (Id.). Example 1 discloses explicitly 100 m2/g and 0.5 cc/g. While the claim requires it be obtained by calcining a metal chelate this is a product-by-process limitation (just like the diol must be utilized in claims 28 and 29) and is examined on the merit 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 the chelate is calcined to form an oxide) as that instantly claimed. (See supra).
With respect to claim 25, MgO is known to be a cubic structure (see the Materials Project citation).
Claims 17-19, 21-26, 28 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over “Formation of Ordered Mesoporous MgO with Tunable Pore Diameter and Its Application As Excellent Alkaline Catalyst in Baeyer-Villiger Oxidation” to Li et al. (hereinafter, “Li at __”). Claim 25 is evidenced by the Materials Project citation.
Regarding claims 17-19, 21-26, 28 and 29 Li discloses a mesoporous cubic MgO nanomaterial (Li at “Fig. 1”) which has a surface area of 150 m2/g, an average pore volume of 10.6 nm, and a pore volume of 0.33 cc/g (“Table 1, MgO-403”). While the claim requires it be obtained by calcining a metal chelate this is a product-by-process limitation (just like the diol must be utilized in claims 28 and 29) and is examined on the merit 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 the chelate is calcined to form an oxide) as that instantly claimed. (See supra).
With respect to claim 25, MgO is known to be a cubic structure (see the Materials Project citation).
Claims 17-19, 21-24 and 26-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or in the alternative, under 35 U.S.C. 103 as being unpatentable over “Enhancing the intermediate-temperature CO2 capture efficiency of mineral MgO via molten alkali nitrates and CaCO3: Characterization and sorption mechanism” to Papalas et al. (hereinafter, “Papalas at __”). Claim 25 is evidenced by the Materials Project citation.
Regarding claims 17-19 and 21-29, Papalas discloses a cubic MgO nanomaterial (Papalas at “Table 2” which is a mixed oxide with 5% Ca) which has a surface area of 52.3 m2/g, pore volume of 0.27 cc/g, and an average pore diameter of 6 nm (“Fig 2(d).” which meets “mesoporous”). While the claim requires it be obtained by calcining a metal chelate this is a product-by-process limitation (just like the diol must be utilized in claims 28 and 29) and is examined on the merit 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 the chelate is calcined to form an oxide) as that instantly claimed. (See supra).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Zhan.
Regarding claim 20, Zhan discloses a metal oxide comprising MgO (Zhan at “Abstract”) which can have a surface area of >=150 m2/g ([0016]), an average pore size of >=20 nm (which overlaps that range instantly claimed of >30 nm which is prima facie obvious, see MPEP 2144.05), and a pore volume of 1 cc/g ([0016]).
Conclusion
Claims 17-29 are rejected.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759