DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status.
This Office Action is responsive to the amendment filed on 05/15/2026. Claims 1-4,7-8, 11-13, 15, 18-20,24 and 27 were pending.. Claims 1,2, 4, 7-8, 11-13, 15, 18-20, 24 and 27 are now pending. Claims 1 ,2, 4, 7-8, 11-13, 15, 18-20, 24 and 27 are presented for examination. Applicant's arguments have been considered.
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.
Claim 1 is rejected under 35 U.S.C. 112(b) 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 not clear what silicon porous composites are claimed : a composition comprising: a) magnesium silicate magnesium orthosilicate or a mixture thereof, b) magnesium fluoride, magnesium fluoride silicate or a mixture thereof or c) mixture of magnesium silicate magnesium orthosilicate or a mixture thereof, b) magnesium fluoride, magnesium fluoride silicate. In other word, three different composition are claimed in claim 1, which makes claim 1 indefinite.
MPEP 2173.06 states that First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted. Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Claims 2, 4, 7-8, 11-13, 15, 18-20, 24 and 27 depend from claim 1 directly or indirectly and fall therewith.
In addition, claim 4 depends from cancelled claim 3.
Response to Arguments
Applicant’s arguments with respect to claims 1-4,7-8, 11-13, 15, 18-20,24 and 27 have been considered but are moot because the new ground of rejection (112 (b))
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: JPO decision to grant a Patent for JP2023538777.
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 ALEXANDER USYATINSKY whose telephone number is (571)270-7703. The examiner can normally be reached IFP.
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, Jonathan Leong can be reached at (571) 270-1292. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexander Usyatinsky/ Primary Examiner, Art Unit 1751
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