DETAILED ACTION
As of the reply filed on July 10, 2026, claims 1 – 2, 5 – 10, 12 – 20 are pending. Claims 3, 4, 11 have been canceled.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
In Applicant’s remarks filed on July 10, 2026, the Applicant submitted that the previous Office Action did not identify any statute, regulation, controlling case law, or MPEP provision holding that subject matter expressly incorporated by reference must be physically repeated in the specification notwithstanding a proper incorporation by reference. Such a provision is entailed in MPEP 608.01(p) which states that “the contents of an application, to be complete, must include a specification containing a written description of the invention using such description and details as to enable any person skilled in the art or science to which the invention pertains to make and use the invention as of its filing date… [t]he example(s) and description should be of sufficient scope as to justify the scope of the claims.” 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.
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:
The claims 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 July 10, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) A person of ordinary skill in the art (POSA) would understand the disclosed process in the context of conventional CVD practice, where humidity is a controlled process parameter and inert carrier gases are supplied in a dry state unless moisture is intentionally introduced as part of the process.
b.) The originally filed specification provides reasonable support for any template particles comprising metal cations and oxyanions, in combination with the other limitations of the claims.
c.) The Office Action rejects the pending claims because the originally filed specification allegedly does not provide written description support for the limitation "the template particles comprising a bulk phase having a solubility in water of at least 5 g/L."
d.) The Office Action rejects Claim 19 because the originally filed specification allegedly does not provide written description support for the limitation that the supplied gas is "substantially free of oxidizing agents."
In response to the applicant's arguments, please consider the following comments.
a.) As a preliminary matter, during patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The Federal Circuit' s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005). Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. Furthermore, the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, while the Examiner recognizes that while silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022). However, in this case, there does not appear to be sufficient evidence that such a negative limitation is necessarily present in the instant disclosure.
Applicant submits that the recitations provided in paragraphs [0075] to [0083] of the originally filed disclosure provide support for the negative limitations that in the claimed step of “supplying a gas to a furnace …” , the gas is substantially free of moisture. The Examiner notes however that the recitation describes example experiments where the only gas sent to the furnace consists of a propylene gas and flowing argon gas ([0081]). The inferential support of the examples then is limited as to what it may reasonably convey to one of ordinary skill concerning sufficient support of a lack of moisture, as the examples are not commensurate in scope with the claimed subject matter.
The Examiner’s notes that Applicant’s citation of Christoph Kastl et al … in footnote 1 of the Applicant’s reply has not been submitted for consideration or otherwise placed on record, and as such is treated as part of argument. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). Nevertheless, Applicant’s argument concerning inert gas requiring to be in a dry state is also not germane to the issue at hand because what is in contention is not that an inert gas is dry or not dry, but whether the gas being supplied to the recited furnace is substantially free of moisture. The inert carrier gas is a constituent of the gas being supplied to the recited furnace; the scope of instant claim 1’s “the gas” encompasses additional components beyond an arguably dry carrier gas and reactive chemical vapor. The originally filed disclosure does not appear to provide direction or suggestion indicating an inherent requirement that the gas provided to the furnace necessarily is absent of moisture or provide inference that any gas mixture that at least contains an inert gas and a reactive vapor is supported so long as there is no moisture.
In light of the above, Applicant fails to demonstrate sufficient support for a gas that may contain any other unrecited component except moisture.
b.) Applicant’s arguments around point b.) center around the question of sufficient support of a subgenus of template precursors having oxyanions (which themselves may be metal-bearing) and metal cations. An example compound that is within the scope of the claimed template precursors include europium (II) hydroxide [lanthanide series cation].
The Examiner notes that determination of adequate written support for newly added subgenus limitations are case-dependent. Furthermore, the Examiner notes that adequate descriptions of generic disclosure and specific examples that fall within a subgenus range do not necessarily imply that a subgenus is supported by the originally filed disclosure. In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972). The Examiner is also aware that subgenuses may be adequately supported where a described generic description is sufficiently close to a subgenus alongside sufficiently close species that would belong to the subgenus. See Ex parte Sorenson, 3 USPQ2d 1462 (Bd. Pat. App. & Inter. 1987). Each case must be decided on its own facts in terms of what is reasonably communicated to those skilled in the art. In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984).
In this case,
Applicant argues that the following provides sufficient support for the subgenus of “template particles comprising metal cations and oxyanions, particle diameters of at most 1 cm”:
Originally presented claim 5: “A method …flowing a chemical vapor over a surface of a substrate … comprises a template …comprises an oxyanionic template particle with a maximum diameter of 1 cm …wherein the oxyanionic template comprises one of [a recited list of oxyanion species, including metal-containing oxyanion species]
Paragraphs [0061] – [0067] of the originally filed disclosure, which describe the definition of oxyanionic templates as used within the originally filed disclosure. The templates are described as substances “that comprise at least one oxyanion-bearing compound as a substantial fraction of their overall composition”. The definition also places special emphasis on the solubility of the oxyanionic template to water. Applicant’s reference to the paragraphs in their argument points to the generic disclosure that would encompass a given subgenus.
Applicant also references paragraphs 79 to 105 to describe that the specification “sulfate-, carbonate-, phosphate- … containing template materials, together with corresponding alkali metal, alkaline earth metal, and other metal-containing template compounds used to form the disclosed oxyanionic templates”. As a first matter, the Examiner notes that if by metal-containing template compounds it is meant other metal-containing cations other than the listed corresponding alkali and alkaline earth metal compounds, there does not appear to be any recitation or other “blaze mark” in the originally filed disclosure that would point in the direction of such a subgenus of cations. As noted above, some of the expressly listed oxyanion species are metal-containing.
As a second matter with reference to the above citation, paragraphs [0079] – [0105] as a whole refer to the particular experiments involving three template precursors where an alkali metal is a cation thereof, and one template precursor where an alkaline earth metal is the cation thereof. The citations point toward essentially species that read upon the genus of “metal cations” but does not provide sufficient suggestion of template precursors having cations beyond the listed subgenuses of alkali metals and alkaline earth metals. The recitation in paragraph [0105] provides expansions for other Group I/II cation- oxyanion combinations, but no clear suggestion concerning the cation itself in combination with oxyanions.
While the provided examples may be numerous and representative of any alkali/alkaline earth metal cation – oxyanions, the class of metal-cation containing oxyanions is larger still , and the generic disclosure-class of any-cation oxyanions dwarfs the class of metal-cation containing oxyanions, especially when considering the required solubility.
Where it is unclear how many compounds may actually fall in a given genera and subgenera, there is a question whether there is sufficient suggestion and/or “blaze marks” that would indicate reasonable conveyance of possession. Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 2023 USPQ2d 269 (Fed. Cir. 2023).
For this reason, a prima facie case of a lack of written description exists for oxyanions of any metal cation.
c.) The alleged ground of deficiency under 35 USC 112(a) was not present in the previous Office Action, and not in the instant Office Action. It is unclear what is the source of Applicant’s argument.
d.) The alleged ground of deficiency under 35 USC 112(a) was not present in the previous Office Action, and not in the instant Office Action. It is unclear what is the source of Applicant’s argument.
Conclusion
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 extension fee 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 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
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