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 .
DETAILED ACTION
Response to Amendment
1. The amendment filed on 06/16/2026 has been made of record and entered.
Claims 1-3, 10, & 12-13 have been amended.
Claims 4 & 11 have been canceled.
Claim 22 has been added.
Claims 1-3, 5-10, & 12-22 are currently pending in this application.
Status of Withdrawn Claim(s)
2. Claims 19-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/29/2026.
Double Patenting
3. 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.
Claims 1-3, 5-10, 12-18, & 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. US 12,349,430 B2 (which is US Application 17/810,548). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
US Pat. '430 teaches the same amorphous mixed metal oxide as claimed. The metal contents of Mg, Zn, other elements, Al and/or Ga, and non-metallic and metalloid impurities disclosed appear to be falling within and/or overlapping with the instant claimed ranges. Any additional limitations disclosed in the claims of the reference would have been an inherent feature of the claimed mixed metal oxide in view of the same mixed metal oxide disclosed and claimed.
The rejection is maintained because a Terminal Disclaimer (T.D.) has not yet been filed. Applicants requested that the rejection be held until the claims are found allowable.
Claim Rejections - 35 USC § 103
4. 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.
Claim(s) 1-3, 5-10, & 12-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3133186, hereinafter “EP ‘186”.
The claimed invention relates to an amorphous mixed metal oxide comprising: metal or metalloid elements comprising:
0.40 to 0.70 parts by mole Mg, 0.30 to 0.60 parts by mole Zn, and 0.00 to 0.30 parts by mole of other elements selected from metals or metalloids,
wherein less than 0.01 parts by mole of the other elements is Al,
wherein less than 0.04 parts by mole of the other elements is Ga; and
wherein a sum of all parts by mole of Mg, Zn, and the other elements is about 1.00;
oxygen; and
less than 0.01 parts by mole of non-metallic and non-metalloid impurities relative to a total of all parts by mole of all elements of the mixed metal oxide;
wherein the mixed metal oxide comprises an amorphous phase (see the instant claim 1).
EP ‘186 discloses a composition MgxZn(1-x)O, wherein x is between about 0.5 and about 0.8 (col. 4- col. 5, [0018]). The composition has a polycrystalline structure comprising a cubic phase and amorphous phase (col. 8, [0030]).
Regarding claims 1-3, 7-8, & 10, EP ‘186 appears to teach the claimed amorphous mixed metal oxide (col. 4- p. 5, [0018]). Based on the chemical formula of the disclosed composition, when x is 0.5, Mg is 0.5 and Zn is 0.5, these values are falling within the instant claimed Mg and Zn ranges. However, when x is 0.8, Mg is 0.8 and Zn is 0.2, these values are falling outside of the claimed ranges. The disclosed Mg and Zn ranges are taken to meet the claimed ranges because they are overlapping with each other.
As set forth in MPEP 2144.05, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to the claim limitation on “0.00 to 0.30 parts by mole of other elements, selected from metals or metalloids, wherein less than 0.01 parts by mole of the other elements is Al, and wherein less than 0.04 parts by mole of the other elements is Ga” in the instant claims 1, 3, 5-6, & 10, since the disclosed composition does not contain any other elements besides Mg and Zn, the amounts of Al and Ga are “0” thus meeting the claimed limitation.
With respect to the claim limitation on “less than 0.01 parts by mole of non-metallic and non-metalloid impurities” in the instant claims 1, 5, & 6, since the disclosed composition does not contain any other elements besides Mg and Zn, there is no impurities contained in the disclosed composition thus meeting the claimed limitation.
Regarding claim 9, the claim further defines that “the oxygen is present in an amount that is within 10 mole% of a stoichiometric amount of the oxide”. The reference while does not indicate the amount of oxygen contained in the disclosed composition, however the oxygen amount contained in the reference composition would inherently be the same in view of the same Mg and Zn amounts disclosed and claimed.
Regarding product-by-process claims 10 & 12-18, the instant claims are directed to an amorphous mixed metal oxide of claim 1 prepared by a process comprising depositing a magnesium oxide and a zinc oxide on a substrate. Since the instant claims are drawn to a product, any difference imparted by product-by-process limitations would have been obvious to one having ordinary skill in the art at the time of the invention was made because where the examiner has found a substantially similar product as in the applied prior art the burden of proof is shifted to the applicant to establish that their product is patentably distinct not the examiner to show the same process of making, see In re Brown, 173 USPQ 685, In re Fessmann, 180 USPQ 324, In re Spada, 15 USPQ 2d 1655, In re Fitzgerald, 205 USPQ 594 and MPEP 2113. While the disclosed composition might not be made by the same process, the product disclosed is the same as claimed.
Claims 1-3, 5-10, & 12-18 are unpatentable as being obvious over EP ‘186.
Allowable Subject Matter
5. Claim 22 is 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.
EP ‘186 discloses the claimed amorphous mixed metal oxide as recited in the instant claim 1, however the reference does not teach the claim limitation on “the other elements are present at greater than 0 parts by mole”.
There is no motivation to combine the teachings of the references together to arrive to the claimed invention.
Response to Applicants’ Arguments
6. Applicants’ remarks submitted with the amendment on 06/16/2026 have been fully reviewed, the arguments regarding the applied reference to EP ‘186 are NOT deemed persuasive because of the following reasons.
EP ‘186 teaches a composition comprising a polycrystalline structure includes both amorphous and cubic crystalline structures (col. 2, [0007]; col. 8, [0030]). It is considered the cubic crystalline structure/phase disclosed in the composition of EP ‘186 is not being excluded from the claimed mixed oxide composition in view of the open-ended transitional phrase “comprising” and “comprises” in the instant claim 1. The claimed limitation on “wherein the mixed metal oxide comprises an amorphous phase” in instant claim 1 is met by the teaching disclosed by EP ‘186.
The amendments to the claims appeared overcome the rejections under 35 U.S.C. 112 (second paragraph) and objections under Claim Objection made in the last office action (dated 03/16/2026).
7. THIS ACTION IS MADE FINAL. 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.
Conclusion
8. Claims 1-3, 5-10, & 12-22 are pending. Claims 1-3, 5-10, 12-18, & 22 are rejected. Claims 19-21 are withdrawn. No claims are allowed.
Contacts
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
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, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
August 19, 2026
Prosecution Insights