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 the Claims
Claims 1-16 are pending wherein claims 3 and 5 are preliminarily amended and claims 7-16 are preliminarily added.
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.
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 1-16 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.
With respect to the recitation “where M is at least one kind selected from Mn, Co, and Al and essentially contains Mn” in claim 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “at least one kind selected from Mn, Co, and Al”, and the claim also recites “essentially contains Mn” which is the narrower statement of the range/limitation and appears to require the presence of manganese and thus it is unclear whether manganese is a required element or not. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Allowable Subject Matter
Claims 1-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
In regard to claim 1, the prior art to Tan et al. (Effect of Sm on performance of Pr/Nd/Mg-free and low cobalt AB4.6 alloys in nickel-metal hydride battery electrode) teaches alloys containing lanthanum, cerium, samarium, nickel and manganese in the form of La3.0xCexSm0.98-4xZr0.02Ni3.91Co0.14Mn0.25Al0.30 where x can only be 0.08, 0.12, 0.16, 0.20 and 0.245 (Table 2 and page 9, left column). The closest composition in Tan et al. would be the instance where x = 0.20 and in that instance the formula becomes La0.6Ce0.2Sm0.18Zr0.02Ni3.91Co-0.14Mn0.25Al0.30 in which case the nickel would be too low relative to the instant invention. Additionally, instant claim 1 utilizes the transitional phrase “having” and there are no disclosures or examples to suggest that the claims would be open to elements beyond lanthanum, cerium, samarium, nickel, manganese, cobalt and aluminum and the alloys of Tan et al. require the presence of zirconium. MPEP 2111.03. Ouyang et al. (‘070), another close prior art requires the presence of zirconium as well, but this element is not present in the alloys of the instant invention (abstract and [0032]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cao et al. (Enhanced discharge capacity and cycling properties in high-samarium, praseodymium/neodymium-free, and low-cobalt A2B7 electrode materials for nickel-metal hydride battery).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSEE R ROE/Primary Examiner, Art Unit 1759