DETAILED ACTION
Claims 13-28 were subject to restriction requirement mailed on 01/16/2026.
Applicant filed a response, and elected Group VII, claim 27, and withdrew claims 13-26 and 28, without traverse on 01/26/2026.
Claims 13-28 are pending, and claims 13-26 and 28 are withdrawn.
Claim 27 is rejected.
Election/Restrictions
Applicant’s election without traverse of Group VII, claim 17 in the reply filed on 01/26/2026 is acknowledged.
Claims 13-26 and 28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/26/2026.
Specification
The disclosure is objected to because of the following informalities:
The present abstract exceeds 150 words. However, the abstract should be in narrative form and generally limited to a single paragraph on a separate sheet preferably within the range of 50 to 150 words in length. See MPEP 608.01(b).
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Aslan et al., Catalytic hydrogen evolution by molybdenum-based ternary metal sulfide nanoparticles, ACS Appl. Nano Mater., 2019 (Aslan) (provided with Restriction requirement issued 01/16/2026).
Regarding claim 27, Aslan discloses particle shaped molybdenum-based ternary refractory metal sulfides, (MMoSx, M = Fe, Co, Ni and Mn) (Aslan, Abstract), reading upon metal-doped molybdenum sulfide powder, wherein the metal is from Groups 3 to 13.
Regarding the method of making the metal-doped molybdenum sulfide, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Aslan meets the requirements of the claimed product, Aslan clearly meets the requirements of the present claim; or alternatively, that it would have been obvious to a person of ordinary skill in the art that Aslan would meet the requirements of the present claim.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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