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 .
Status of Claims
Claims 1, 2, 6, 7, 14, and 16 are currently amended, Claims 3-5, 10-13, and 15 are as previously presented, and Claims 8 and 9 are withdrawn and as previously presented. Group I, Claims 1-7 and 10-16, is elected and Group II, Claims 8 and 9, is withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL - The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 and 10-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claim 1, the limitation “alkali metal and/or alkaline earth metal halide” in line 4 reads on either “alkali metal” or “alkali metal halide” as currently recited. Based on the specification in Examples 1-5 on pages 7-11, alkali metal halides are used; there are no examples of using alkali metals. As written, the limitation “alkali metal and/or alkali metal halide” is broader in scope than what is recited in the specification. Suggested language is “at least one alkali metal halide and/or alkaline earth metal halide.”
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 10-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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, line 10, it is not clear of the source of “excessive metal.” The claim does not recite how the “excessive metal” relates to steps (1)-(3), alkali metal and/or alkaline earth metal halides, or tantalum powder raw material.
In Claim 6, it is not clear what is meant by “effective element” in line 2. Does an “effective element” include B, P, or N or does it refer to an unrecited element?
In Claim 16, it is not clear what is meant by “effective element” in line 2. Does an “effective element” include B, P, or N or does it refer to an unrecited element?
Claims dependent on any of the rejected claims are likewise rejected under this statute.
Allowable Subject Matter
Claims 1-7 and 10-16 are free from prior art rejections but are not in allowable form because of the rejection under 35 U.S.C. 112(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. He et al (US 2003/0110890 A1) teaches reacting Ta and/or Nb oxides with at least one metal halide (Mg, Ca, Sr, Ba, and Ce) [0007] at 600-1000 °C [0011] in a closed reactor in an inert atmosphere [0014 and 0015]. Vacuum treatment occurs in a separate furnace [0032, 0043].
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
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