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 .
Election/Restriction
Applicant’s election, without traverse, of Group I (claims 1-9) in the reply filed May 5, 2026, to the restriction requirement dated March 6, 2026, is hereby acknowledged.
Accordingly, claims 1-9 have been examined in the instant Office action, whereas claims 10-20 have been withdrawn from consideration as drawn to a nonelected invention but remain pending with the present application.
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.
Claim 1, and claims 2-9 that depend therefrom, are rejected under 35 U.S.C. 112(b) as 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.
The present claims are indefinite because claim 1 recites a “precursor comprising a tungsten precursor and a carbon-containing material, wherein the precursor comprises less than 0.02% by weight of the carbon- containing material based on a total weight of the precursor, as measured by Total Carbon analysis using Non-Dispersive Infrared Detection” (emphasis added). This independent claim is indefinite because it is unclear and confusing as to which “precursor” recited in lines 3 and 4 (in bold) is referring back to (the ones italicized). Are the two precursors in bold referring back to the one in the preamble or, alternatively, to the tungsten precursor recited in line 2?
For purposes of this action, the examiner is assuming the term “precursor’ recited in lines 3 and 4 of claim 1 are referring back to the one in the preamble.
Clarification and/or correction by Applicant of these issues in a subsequent reply to this action is respectfully requested.
Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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 1, claims 2-9 that depend therefrom, are rejected under 35 U.S.C. §103 as unpatentable over McGrath (US 3,254,945 A to McGrath et al., issued June 7, 1966).
McGrath discloses a process for manufacturing tungsten oxide, particularly one characterized by either an extremely low molybdenum content, wherein this form of tungstic oxide has increased utility as compared to prior forms of tungsten oxide (col. 1, lines 10-16 and 66-71; Figures 1A and 1B of McGrath). The tungsten compounds are derived from decomposition of ore materials with controlled variations necessary throughout the process to yield the desired chemical/physical properties of the reduced/finished tungsten product, which can be tungsten oxide or tungsten alloy/metals (col. 2, lines 1-20). The size of the tungsten oxide particles from about one to two microns (col. 2 lines 29-32; Figure 2).
As shown in Figures 1A and 1B, McGrath discloses dissolving a scheelite ore with hydrochloric acid to provide a filter cake of tungsten oxide and soluble calcium chloride, feeding/drying the filter cake by indirect heating in a gas fired furnace, wherein the filter cake solids consist of a finely divided crude tungsten oxide compound and other minerals, subjected the solids to reduction-chlorination, preferably by contact with carbon tetrachloride vapor (volatile, present claim 9) at a reaction zone temperature of 4000°C (col. 2, lines 32-53) Reduction-chlorination can be effected on the crude material with carbon and chlorine (usually at about 6500°C. to 1200°C) to produce a gas phase containing tungsten oxychloride, molybdenum pentachloride and hydrogen chloride from which these three components can be separated and recovered respectively as tungsten oxide, molybdenum oxide-hydrochloride and hydrochloric acid (col. 2, lines 43-57). The chlorinated agent can be a chlorinated hydrocarbon (haloalkane, present claim 8), which is also a volatile compound (col. 4, lines 37-43).
McGrath does not expressly disclose the amount of carbon present in its resultant “precursor” tungsten compound in accordance with the limitation recited in present independent claim 1. It is noted that this limitation recites “the precursor comprises less than 0.02% by weight of the carbon- containing material based on a total weight of the precursor, as measured by Total Carbon analysis using Non-Dispersive Infrared Detection.” Assuming, as discussed supra, this limitation is referring to the precursor of the preamble, this range (less than 0.2 percent%) reads on zero. As discussed above, in an embodiment, McGrath depicts its process, after separation/recovery, providing tungsten oxide, molybdenum oxide-hydrochloride and hydrochloric acid, none of which have carbon (zero percent), irrespective as to which “Total Carbon analysis” or other form of measurement is used.
Moreover, it would have been within the purview of one skilled in the art at the time of the filing of the present application to purify the recovered precursor components in accordance with a desired use as taught by McGrath (supra). That is, it would have been within the purview of one in the art to adjust variations necessary throughout the process to yield a desired chemical/physical property of the reduced/finished tungsten product, such as the purification of the resultant product (e.g., zero carbon), which can be done by routine optimization. See MPEP §2144.05 II A.
Thus, the instant claims are unpatentable over McGrath .
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J FIGUEROA whose telephone number is (571)272-8916. The examiner can normally be reached on 8:30 am -6:00 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J FIGUEROA/Primary Examiner, Art Unit 1763
July 11, 2026
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