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 § 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.
Claim 10-11 is 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.
Claim 10 recites the limitation "the amphoteric metals" in line 3. There is insufficient antecedent basis for this limitation in the claim. The claim previously sets forth the addition of at least one amphoteric metal. The claim goes on to set forth that ‘the amphoteric metals’ means four elements of Al, Zn, Sn and Pb. It is unclear whether this claim requires a combination of all four of these elements- Al, Zn, Sn and Pb or at least one metal selected from the group consisting of Al, Zn, Sn, and Pb. A reasonable interpretation of the claims requires all four elements as set forth, but it seems as though applicant intended this to be a Markush group from which the at least one metal is selected from said group. Claim 11 is dependent on claim 10 and rejected on the same basis. Appropriate correction or explanation is required.
Claim 12 is 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.
Regarding claim 12, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See4 MPEP § 2173.05(d).
Allowable Subject Matter
Claims 1-9, 11, are 13-16 allowed.
The following is an examiner’s statement of reasons for allowance: The previously cited patent application to Shield is considered to be the closest prior art. Shield clearly teaches that the powder as set forth contains a first and second phase, wherein hcp is the main phase and fcc is a sub-phase. Shield is clear in setting forth that the sub-phase is present as individual nanoparticles (See Paragraph 60, 68, and 70). The amendment to the claim requires that the particle as set forth contains both the main phase and sub-phase inside individual metal nanoparticles. The claims require this as each nanoparticle comprises an hcp-Co phase (See line 5) and the amended claim requires that the nanoparticle further comprises the subphase inside the metal nanoparticles (See line 8). The included NPL document to Kumar is also noted as being relevant prior art. Kumar teaches the creation of Co nanoparticles, wherein the nanoparticles contain two phases (hcp and fcc), but fails to provide any indication that the individual nanoparticles contain both phases concurrently. The teachings of Kumar seem to indicate that the nanoparticles are each purely hcp or fcc and the individual nanoparticles do not comprise both an hcp and fcc phase.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see pages 4-6, filed 5/19/26, with respect to the rejection of the claims under USC 102 over Shield and under USC 103 as obvious over Shield in view of Xu or Jung have been fully considered and are persuasive. The rejection of the claims under USC 102 and USC 103 has been withdrawn. New claims 9-16 are noted in the amendment to the claims. The new claims do not appear to contain new matter; however, instant claims 10 and 12 introduce limitations that are indefinite in nature and give rise to new rejections under USC 112.
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 MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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