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 .
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 4-10, 14 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushi et al. (US 2022/0002166).
Regarding claims 1-9
Fukushi discloses an aqueous solution 10 to 90 wt % of tungstic acid and mixing this solution with an aqueous amine solution to bring the pH to between 8 to 11 (claims 7 and 9).
As the amount of tungstic acid of the reference overlaps the claimed amount, The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Fukushi discloses that the amine can be ammonia, methylamine or dimethylamine (para 0064) from a short finite list of amines with predictable results, making the selection of these amines obvious. Further, it would be obvious to use both ammonia and an organic amine because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
With respect to the particle size, as the tungstic acid is in solution it would be expected to have its particles smaller than 1 nm, as the literature puts the diameter of a tungstic acid molecule at between 0.6 to 0.8 nm.
Regarding claims 10
Fukushi discloses that the tungstate is precipitated from this solution (claim 7) and discloses that this is a tungsten oxide powder (title and abstract).
Regarding claim 14
Fukushi discloses having both an element such as aluminum in the negative electrode with the tungsten oxide powder (paras 0054-0055, and Figure 3).
Regarding claims 16-19
Fukushi discloses firing the formed tungsten oxide powder (claim 7), and figure 3 shows the tungsten after having been applied as what can be called a film to a substrate.
Allowable Subject Matter
Claims 11-13, 15 allowed.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art fairly teaches or suggest a method as claimed, nor is there any suggestion or motivation available to modify the prior art to arrive at the claimed method.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Fukushi is silent as to using both ammonia and an organic nitrogen compound. This is not persuasive as Fukushi discloses ammonia and methylamine together, and it would be obvious to combine two or more materials for the same purpose to make a third material with the same purpose.
Applicants argue that Fukushi teaches away from the claimed 0.1to 40 mass % tungsten in terms of WO3. This is not persuasive as the range of the reference overlaps the claimed range it necessarily cannot teach away from those parts of the range. Further, applicants have provided no evidence of new or unexpected results for the amount of tungstic acid used.
Applicants argue that the 40 to 80 wt % of Fukushi is more than 10,000 times greater than the solubility limit. If true this same limitation would apply to the instant invention, and if the instant invention can form a solution, then the composition of the reference would also be expected to form a solution, and indeed Fukushi discloses an aqueous solution.
Applicants argue about the particle size of the tungstic acid in the solution of Fukushi. However, the particle size of the tungstic acid molecules in both the reference and Fukushi would be expected to have the same diameter, and the literature discloses that the diameter of tungstic acid is between 0.6 and 0.8 nm.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/ Primary Examiner, Art Unit 1734
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