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 .
Election/Restrictions
Applicant's election with traverse of 1-4, and 10-13 in the reply filed on 6/22/2026 is acknowledged. The traversal is on the ground(s) that the prior art cited in the restriction does not teach the special technical feature of claim 1. This is not found persuasive because the special technical feature of claim 1 is at least taught in the prior art cited in the prior art rejections below.
The requirement is still deemed proper and is therefore made FINAL.
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) 1-4, and 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TW 201407794.
Regarding claim 1, TW ’794 teaches: “A porous metal oxide semiconductor film is formed on the electrode layer (1) or on the titanium oxide film (1) provided as necessary. Porous The average pore diameter of the metal oxide semiconductor film (1) is in the range of 10 to 40 nm, and the pore volume is in the range of 0.25 to 0.8 ml/g. The porous metal oxide semiconductor is not particularly limited, and is preferably one or more metals selected from the group consisting of titanium oxide, cerium oxide, zirconium oxide, cerium oxide, tungsten oxide, cerium oxide, zinc oxide, tin oxide, and indium oxide. Made up of oxides. Among them, crystalline titanium oxide such as anatase type titanium oxide, brookite type titanium oxide, and rutile type titanium oxide can be preferably used. Further, the film thickness of the porous metal oxide semiconductor film (1) is preferably in the range of 0.1 to 50 μm.” (Description). The film may include iridium oxide to provide reduction catalytic energy (Description).
Regarding claims 2-3, and 10, TW ‘794 does not expressly state that the composition has the claimed hysteresis of claim 2 and the claimed surface area of claim 3. However, “[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). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112. The product of TW ’794 is substantially similar because it has the same pore volume and pore size.
Regarding claims 4, 11-13, the material may include rutile titanium oxide (Description).
Conclusion
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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