DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 2, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The specification remains objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Regarding claim 1, the limitation of “flowing the gas into a heated furnace environment …. at a temperature between 400°C and 1000°.
Additionally regarding claim 1: the requirement of “dissolving in water a bulk phase of the template particles, the bulk phase having a solubility in water of at least 5 g/L, to form an aqueous solution and porous perimorphic framework” is not present in the present specification. The subject matter is found in paragraph [0008] of provisional application 63/129154, which the present application derives priority therefrom. However, subject matter that provides basis for claimed subject matter should be expressly discussed in the present specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1 – 2, 5 – 10, 12 – 20 remain 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.
Regarding claim 1:
While the amendments to the claims greatly ameliorated the identified deficiencies found in instant claim 1. The claims have been amended to recite:
“supplying a gas to a furnace … the gas substantially free of moisture and comprising an inert carrier gas and a reactive chemical vapor”
“flowing the gas into a heated furnace environment over surfaces of the template particles …the template particles comprising metal cations and oxyanions”
The originally filed disclosure does not expressly recite the added claim limitations. Applicant states in their reply filed on September 20, 2018 that the amendments to the claims are supported by at least paragraphs [0007], [0008], [0051], [0056], [0059], [0060], [0061], [0063], [00100], [00107], [00110] and FIG. 12.
While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. See MPEP 2163.02 and In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).
With regards to “supplying a gas to a furnace … the gas substantially free of moisture and comprising an inert carrier gas and a reactive chemical vapor”:
The scope of the limitation allows for a gas that has many chemical species, as it comprises the reactive chemical vapor and the inert carrier gas. Under the broadest reasonable interpretation, the gas can contain any number of other non-inert chemical species except a substantial amount liquid water droplets (moisture) and perhaps even a substantial amount of gaseous water (steam). The originally filed disclosure only discusses that only argon gas is included as an additional chemical species with a reactive chemical vapor ([0079] – [0081]). The Examiner does note that argon gas is a representative gas in the genus of inert gases as understood in the art. Additionally, the claim element contains a negative limitation. Any negative limitation or exclusionary proviso must have basis in the original disclosure. There does not appear to be any recitation or concern concerning moisture in the supplied gas. Furthermore, the mere silence of a negative element is insufficient to demonstrate support a negative limitation.
With regards to “supplying a gas to a furnace containing template particles …” and “flowing the gas into a heated furnace over surfaces of the template particles …the template particles comprising metal cations and oxyanions”:
The closest support for the limitation concerning metal cations and oxyanions, is best found in original claim 6 for metal cations. Original claim 6 describes oxyanionic templates comprising Group I or Group II metal cations.
However, the claimed scope of the limitations encompasses a vast subgenus of template precursors and any and all metal cations, of which the expressly recited precursors are only a small list of species thereof. While the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) ZZZY (include here scope of claim and how it is not supported).
As recited, the closest support for the aforementioned limitations also does not indicate that one of ordinary skill in the are could predict the operability in the invention other than in the recited species. In re Curtis, 354 F.3d 1347, 1358, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004).
Thus, in sum the amendment introduces New Matter. Accordingly, there is no reasonable conveyance to one of ordinary skill in the art that the inventor or joint inventor has possession of the claimed invention at the time the application was filed.
The Examiner also notes that the recited “heated furnace environment” is not necessarily referencing a portion of the recited “a furnace”.
Additionally, the Examiner notes that the scope of claims 6, 13 and 14 cure the deficiency of limitation regarding the “flowing the gas over surfaces of the template particles …the template particles comprising metal cations and oxyanions”.
Regarding claim 19:
Similar to the deficiency regarding negative limitations as discussed above, any negative limitation or exclusionary proviso must have basis in the original disclosure. There does not appear to be any recitation or concern concerning the presence of any oxidizing agent. Furthermore, the mere silence of a negative element is insufficient to demonstrate support a negative limitation. The Examiner does note that some of the provided experiments are performed in argon gas, an inert gas, there is insufficient disclosure that would reasonably imply support for the negative limitation.
Response to Arguments
Applicant's arguments filed on January 2, 2026 have been fully considered but they are not fully persuasive.
Applicant’s principal arguments are:
a.) With regards to the objection to the specification, the Applicant submits that the instant specification provides written-description support for the amended limitation concerning the solubility value of “at least 5g/L”.
In response to the applicant's arguments, please consider the following comments.
a.) At issue is that the recited claim limitation is not expressly present in the instant specification, not that there is a lack of written support in view of the requirements of 35 USC 112(a). As stated above, support for the solubility value was found at the time of filing of the instant specification in the provisional application 63/129154, which the instant specification states as being incorporated by reference to the instant disclosure. The objection to the specification is in part to minimize the public’s burden to search for and obtain copies of documents incorporated by reference, especially for claim limitations recited in the present claims. See MPEP 608.01(p) Heading I. See also MPEP 2163.07(b) which indicates the relationship between information present by incorporation by reference and the originally filed disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717