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 .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.
Status of Application
Claims 1-11 are pending and presented for examination.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18282347 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of ‘347 heats silica under chlorine atmosphere whereas claim 10 is heating silica or alumina n a halogen atmosphere and the usage of chlorine is a species of the halogen claimed.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 10 of copending Application No. 18282319. Althoug the claims at issue are not identical, they are not patentably distinct as the claims in ‘319 are drawn to just silica having U of <0.08 ppb, Fe <100 ppm, and Ti <10 ppm whereas the instant claim 11 is drawn to any metal oxide.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2018096876 (hereinafter, “WO ‘876 at __”; cited and provided by Applicants).
Regarding claim 11, WO ‘876 discloses a silica composition powder which has U content of 0.02 ppb, Fe at 0.1 ppm (while the claim recites “in terms of Fe2O3”, this is considered to be met as this is an iron containing impurity in an oxide of silicon), and the content of Ti is 0 ppm (which is recited in the claim as “in terms of TiO2” but the same rationale with Fe2O3 equally applies here; WO ‘876 at “Example 1”).
Claims 1, 2, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JPH0640713 to Yoshiyuki et al. (hereinafter, “Yoshiyuki at __”; cited and provided by Applicants).
Regarding claims 1, 2 and 10, Yoshiyuki discloses a method of producing a metal oxide powder (Yoshiyuki at quartz) comprising heating the metal oxide to 1000-1500 C in a chlorine atmosphere (Yoshiyuki at “Abstract”).
As to claim 9, given heating to above 400 C (the instant specification regards the temperature of 400-1200 C as being enough to result in chloride formation) the production of halides of the impurities is considered to occur inherently given this same process though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
Claims 1, 2, 5, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JPH07172977 to Hajime et al. (hereinafter, “Hajime at __”; cited and provided by Applicants).
Regarding claims 1, 2 and 10, Hajime discloses “the amorphous quartz particles are purified with a halogen gas. That is, the purification treatment of the amorphous quartz particles is preferably performed at a high temperature of 700 ° C. or higher in an atmosphere containing a halogen gas such as . . . Cl2” (Hajime at 5 paragraphs before “Comparative Example 1”).
Concerning claim 5, heating is done in the presence of an inert atmosphere (Hajime at two paragraphs before “Comparative Example 1”).
As to claim 9, given usage of 700 C and as this falls between 400 and 1200 C this is considered to be sufficient to form halides from the impurities of Fe, etc. for the same reasons as in Yoshiyuki.
Claims 1, 2, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2006021948 to Morita et al. (hereinafter, “Morita at __”).
Regarding claims 1, 2 and 10, Morita discloses in “Example 1” a method of purifying silica by heating it at 1000 C in a chlorine atmosphere.
As to claim 9, given usage of 1000 C and as this falls between 400 and 1200 C this is considered to be sufficient to form halides from the impurities of Fe, etc. for the same reasons as in Yoshiyuki.
Allowable Subject Matter
Claims 3, 4 and 6-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claims 3, 4 and 7, none of the cited prior art, either alone or in combination, discloses or reasonably suggests in a method of purifying a metal oxide via halogen atmosphere the subsequent exposure to a reduced pressure. Morita is the closest piece of prior art and it discloses reduced pressure during the chlorine gas exposure, not after.
As to claim 6 and 8, none of the cited prior art, either alone or in combination, discloses or reasonably suggests in a method of purifying a metal oxide via halogen atmosphere the subsequent exposure to an inert gas at a temperature higher than the halide gas exposure temperature. Hajime is the closest piece of prior art and it discloses exposure at the same time at the same temperature.
Conclusion
Claims 1, 2, 5 and 9-11 are rejected. Claims 3, 4 and 6-8 are objected to.
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.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/ Primary Examiner, Art Unit 1759