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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 5-10, and 16-17 is/are rejected under 35 U.S.C. 102(a)1 as being anticipated by CN 1169685.
Regarding claim 1, 5, and 16-17, CN ‘685 teaches a material that includes iron oxide particles containing molybdenum (Example 19). The material is polyhedral shape such as cubic (Description). CN ’685 teaches that the particles may form agglomerated particles (Description). CN ‘685 does not expressly state a D10, D50, D90, or a dispersity index as recited in the requirements of claims 1 and 5. However, “the 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). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of CN ‘685 is substantially similar to the claimed product because it has a similar chemical composition and structure. Also, the larger agglomerated particles shown in the figures appear to show particle characteristics similar to what is recited in instant claim 1, 5, and 16-17 (See Figures).
Regarding claims 2-3, CN ‘685 teaches that the particles may have a length of 0.3 to 3 microns, these are considered crystallites because the disclosure describes that the particles may form aggregates having larger particle sizes (Description). The length of the particles may be considered a plane under the broadest reasonable interpretation of the claims.
Regarding claims 4-5, CN ’685 teaches that the particles may form agglomerated particles (Description). CN ‘685 does not expressly state a D10, D50, D90, or a dispersity index as recited in the requirements of claims 4-5. However, “the 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). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of CN ‘685 is substantially similar to the claimed product because it has a similar chemical composition and structure. Also, the larger agglomerated particles shown in the figures appear to show particle characteristics similar to what is recited in instant claim 4-5 (See Figures).
Regarding claim 6, the particles may contain 1200 grams iron oxide and 47.7 grams of molybdenum trioxide (Example 19).
Regarding claims 7 and 8, the particles may contain 1200 grams iron oxide and 47.7 grams of molybdenum trioxide (Example 19), which would be approximately 4% molybdenum, which would also exist on the surface because the iron oxide and molybdenum oxide are mixed (Example 19). Thus, the particles would be selectively rich in molybdenum.
Regarding claim 9, CN ‘685 does not expressly state “the pH of the isoelectric point at which the potential is 0 is 2 to 5 as determined by zeta potential measurement”. However, “the 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). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of CN ‘685 is substantially similar to the claimed product because it has a similar chemical composition and structure. Also, the larger agglomerated particles shown in the figures appear to show particle characteristics similar to what is recited in instant claim 4-5 (See Figures).
Regarding claim 10, the surface area may be less than 1.2 m^2/g (claim 8).
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.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 1169685 as applied to claim 1 above, and further in view of Kowaleski US 2008/0207858.
Regarding claim 18, CN ‘685 teaches that the iron oxide particles may be used in a wide variety of different applications such as pigments and catalysts.
CN ‘685 does not expressly teach that the specific surface area of the iron oxide particles if 5 to 50 m2/g.
Kowaleski teaches an analogous iron oxide (Abstract) that includes molybdenum (Paragraph [0016]). The iron oxide is used as a catalyst (Examples), and may have a surface area of 0.01 to 20 m2/g (Paragraph [0053]), which overlaps the range recited in claim 18. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
At the time of invention, it would have been obvious to the person having ordinary skill in the art to form the iron oxide of CN ‘685 including a surface area of 0.01 to 20 m2/g in view of Kowaleski. The suggestion or motivation for doing so would have been to use the particles of CN ‘685 as a catalyst as shown in Kowaleski.
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive.
Applicant argues that CN ‘685 does not have the claimed particle size recited in claim 1 because there is no express teaching of particle size in CN ‘685. In response, once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. MPEP 2112(V). The product of CN ‘685 is substantially similar in composition and applicant has not provided any evidence showing that the CN ‘685 does not inherently possess the claimed particle size characteristic.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731
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