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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 121 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/295,729, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Regarding claim 13, the prior-filed application does not disclose “the hierarchical silica composite has a silane coating that coats at least a portion of a surface of the hierarchical silica composite” of the catalyst, “the active catalytic material is incorporated into a lattice of the hierarchical silica composite by isomorphous substitution“, “the dopant is located inside the mesopores of the hierarchical silica composite”, “an amount of the dopant is in a range of 10-20 wt.%”, “an amount of the active catalytic material is in a range of 5-7.5 wt.%”, and “an amount of the hierarchical silica composite is in a range of 15-70 wt. %” of the catalyst, and “all of which are relative to the total weight of the catalyst” (underlined for emphasis). The prior-filed application discloses these limitations exclusively in the context of nanotherapeutics, and not in the context of catalysts. Similarly, regarding claim 3, the prior-filed application does not disclose “the mesopores in the catalyst have a pore volume in the range of 0.5-1.5 0.9-1.5 cm3/g and a surface area in the range of 1,000-1,600 m2/g” (underlined for emphasis). Accordingly, claim 13 and dependent claims 2, 3, and 15-19 are not entitled to the benefit of the prior-filed application.
If Applicant is in disagreement with the Examiner regarding support for priority, Applicant is respectfully requested to point to page and line number in the prior filed Application wherein support may be found for the instant invention.
This application repeats a substantial portion of prior Application No. 16/295,729, filed March 7, 2019, and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
The effective filing dates of claims 2, 3, 13, 15-19 are August 2, 2023.
Drawings
The drawings are objected to because:
At least one drawing submitted in file is in color without granted petition to accept color drawings.
In FIG. 12, the X-axis and Y-axis lack descriptive labels and units of measurement. Without these labels, the technical significance of the data points and the relationship between the variables cannot be understood, failing to provide a clear understanding of the claimed invention.
Appropriate correction is required.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Specification
The specification is 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:
The specification does not disclose a pore volume and a surface area of the mesopores in the catalyst as claimed in claim 3.
The specification does not disclose a silane coating of the catalyst as claimed in claim 13.
The specification does not disclose the incorporation of active catalytic material by isomorphous substitution and an amount of active catalytic material in the catalyst as claimed in claim 13.
The specification does not disclose the location and an amount of dopant in the catalyst as claimed in claim 13.
The specification does not disclose an amount of hierarchical silica composite in the catalyst as claimed in claim 13.
Correction and/or amendment is required.
The disclosure is objected to because of the following informalities:
The use of the terms BODIPY®, LUDOX®, HP-INNOWax®, PoraPak®, QuantiNova® SYBR GREEN®, TWEEN® 20, Molecular Imager®, Gel Doc™, Triton™ X-100, ProLong Diamond®, SlowFade Diamond®, LSM 780®, ELYRA PS.1®, Axio Observer®, ZEN®, IVIS™, Rigaku®, JASCO®, and ShinCarbon ST®, which are a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 Indefiniteness
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.
Claims 2, 3, 13, and 15-19 are 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 13 recites “an amount of the dopant is in a range of 10-20 wt.%” and “an amount of the active catalytic material is in a range of 5-7.5 wt.%.” The claim further indicates that the dopant forms part of the active catalytic material. Because the dopant is a component of the active catalytic material, the weight percentage of the dopant cannot logically exceed the weight percentage of the active catalytic material itself. Accordingly, claim 13 is internally inconsistent and unclear.
The dependent claims fall therewith.
Clarification and/or amendment is required.
Claim Rejections - 35 USC § 112 Improper Dependency
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for not referencing to a claim previously set forth.
Claims 2 and 3 improperly depend from claim 13, which is a subsequently numbered claim. A dependent claim must refer to an earlier numbered claim. See 37 CFR 1.75(c) and MPEP § 608.01(n).
Correction is required to place the claims in proper dependent form. Appropriate correction may include renumbering the claims and/or amending the dependency so that each dependent claim refers only to a preceding claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONG HWAN BAEK whose telephone number is (571)272-0670. The examiner can normally be reached Mon - Thu, 9 am - 3 pm ET.
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, Michael G Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONG HWAN BAEK/Examiner, Art Unit 1618
/Nissa M Westerberg/Primary Examiner, Art Unit 1618