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Claims 1-29 (1-16 are withdrawn) are pending and presented for examination. Claims 17, 20 and 21 were amended via the instant amendment dated 14 April 2026 which is acknowledged and entered.
Response to Arguments
Applicant’s remarks dated 14 April 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The rejection of claim 27 under the obviousness-type double patenting doctrine over claim 1 of US Patent No. 11638911 is WITHDRAWN over the instant amendment setting forth the pore size is >=30 nm as claim 1 of ‘911 discloses ~2~7 nm and thusly cannot make obvious over instant claim 27.
The generic argument with respect to the product-by-process nature of the claims is noted. While Applicants now regard the “greater than about 30 nm” to be of particular note that the method positively affects the final product, as will be shown infra that is not the case as a pore diameter of “greater than about 30 nm” would be expected (and above 20 is clearly made obvious over) by Zhao.
The rejection of claims 17-19, 21-23, 25 and 26 under 35 U.S.C, 102(a)(1) and 35 U.S.C. 102(a)(1)/103 over 17-19, 21-23, 26, 28 and 29 under 35 U.S.C. 103 over Yang is WITHDRAWN over the instant amendment requiring an average pore diameter of “greater than about 30 nm” as Yang discloses ~20 nm.
The rejection of claims 17-19, 21-25, 26, 28 and 29 under 35 U.S.C. 102(a)(1)/103 over Suib is WITHDRAWN over the instant amendment requiring an average pore size of “greater than about 30 nm” as Suib was not used to reject claim 20 which taught slightly narrower “greater than 30 nm” as Suib discloses 13 nm.
The rejection of claims 17, 19, 21-23, 25, 26, 28 and 29 under 35 U.S.C. 102(a)(1)/103 over Kim is WITHDRAWN over the instant amendment requiring an average pore size of “greater than about 30 nm” as Kim did not disclose the slightly narrower “greater than 30 nm” as Kim discloses 2.4 nm.
The rejection of claims 17-19, 21-24, 26, 28 and 29 under 35 U.S.C. 102(a)(1)/103 over Liu is WITHDRAWN as Liu was not used to reject claim 20 which recited the slightly narrower “greater than 30 nm” as claim 17 now recites “greater than about 30 nm” as Liu discloses 2-10 nm.
The rejection of claims 17-19, 21-26, 28 and 29 under 35 U.S.C. 102(a)(1)/103 over Li is WITHDRAWN over the instant amendment requiring “greater than about 30 nm” as Li was not used to reject claim 20 which recited the slightly narrower “greater than 30 nm” as Li discloses 10.6 nm.
The rejection of claims 17-19, 21-24 and 26-29 under 35 U.S.C. 102(a)(1)/103 over Papalas is WITHDRAWN over the instant amendment requiring “greater than about 30 nm” as Papalas was not used to reject claim 20 which recited the slightly narrower “greater than 30 nm” as Papalas discloses 6 nm.
The rejection of claims 17-19 and 21-29 under 35 U.S.C. 102(a)(1)/103 and 20 under just 35 U.S.C. 103 is MAINTAINED and updated below to reflect the instant amendment.
The traversal is that Zhao recites a “broad, open ended range which does not constitute a disclosure of a material with an average pore diameter greater than about 30 nm . . . for at least two reasons.
First, Zhao provides no working example, measured data, or specific embodiments demonstrating a material with an average pore dimeter of 30 nm or greater” (Remarks at 13). This is not persuasive, as “Table 1” discloses that for “Ex. 1” a pore volume of 1.56 cc/g, and a surface area of 208 m3/g, a generally calculation for pore size from the pore volume and surface area is PD=4V/S where PD is the pore diameter, V is the pore volume, and S is the surface area, so 1.56e-6/208=0.03e-6 or 30 nm. Accordingly, there is measured data that suggests a pore size within the range. While this is a classical generic interpretation based on a perfect particle, it would still suggest to one of ordinary skill in the art, that at minimum, greater than 20 nm has supported values that are over that such that they would conclude that a prima facie case of obviousness still exists with respect to “greater than about 30 nm” and “greater than 30 nm”. Even taking into account the sintered aspects, one would expect an increase in the pore volume due to the decrease in the surface area (74 nm when sintered at 1100 C for 5 hours) as larger pores will coalesce together and smaller pores will disappear (See “Effect of sintering temperature on pore growth in ZrO2–8 mol% Y2O3 ceramic compact prepared by citric acid gel route: a small-angle neutron scattering investigation” to Sen et al.). Accordingly, the Office has established that the products are the same to meet the burden for a product-by-process claim.
Claim Rejections - 35 USC § 112
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.
Claims 18 and 21 are 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 17 from which claims 18 and 21 depend recites that the average pore volume is “greater than about 30 nm”, but claim 18 recites an average “greater than about 10 nm” and claim 21 “about 2 nm and about 50 nm”, as both ranges recite values outside of “greater than about 30 nm”, they are failing to further limit claim 17 with respect to the average pore volume. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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 Zhao 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 1”) which has a surface area of 209 m2/g (covering “about 200 m2/g”) and a pore volume of 1.56 cc/g (“Table 12”) and an average pore size of at least 20 nm ([0081], which overlaps “greater than about 30 nm” which is prima facie obvious as it overlaps that range instantly claimed, see MPEP 2144.05) “Example 1” presents a pore size of 30 nm which is considered to also possess enough specificity to anticipate “about 30 nm”. 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).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao.
Regarding claim 20, Zhao 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]). “Table 1” also discloses 30 nm which lies close enough to “greater than 30 nm” such that a prima facie case of obviousness exists there, with SSA of 200 and PV of 1.56 cc/g.
Conclusion
Claims 17-29 are finally rejected.
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.
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