20Notice 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
This application is a CON of PCT/JP2022/017351 (filed 04/08/22), which application claims priority to: JP 2021-066201 (filed 04/09/21), JP 2021-066203 (filed 04/09/21), and to JP 2021-066639 (filed 04/09/21).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The Drawings filed 10/05/23 are approved by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-19) and species (VI) (MB metal of Group 14)in the reply filed on 03/24/26 is acknowledged. The traversal is on the ground(s) that there is no burden to examine the groups in one application. This is not found persuasive because, as stated in the requirement mailed 03/12/26, the searches required for the above distinct groups (and species) are not coextensive.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The IDS statements filed 10/05/23, 06/05/24, 10/10/24, 05/29/25, 06/18/25, 11/26/25, 02/19/26, 04/07/26 and 04/23/26 have been considered. Initialed copies accompany this action.
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.
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 6-9, 16, 18 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.
In each of dependent claims 6 and 16 (and claims dependent thereon), it is unclear if the “further comprising…” metal element and/or metal oxide (Mα) is present as part of the metal or oxide of element (Mβ) recited in in the independent claim(s), or if the metal (Mα) is present as an independent constituent (e.g. a second metal particle or compound). Clarification is required. For examination on the merits, the examiner construes that either alternative is within the scope of these dependent claims.
Claim Rejections - 35 USC § 102 and/or 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Construction
The examiner construes the preamble limitation “…for graphite electrode production” to recite a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). Additionally, applicant’s definition of Group 14 element (i.e. Si, Ge and Sn) at para 0066 of instant PGPUB 2024/0030440 A1 is noted. Lastly, as stated in the above 112 rejection, dependent claims 6 and 16 (and claims dependent thereon) are construed as the metal element and/or metal oxide (Mα) is present as part of the metal or oxide of element (Mβ) recited in in the independent claim(s), or present as an independent constituent (e.g. a second metal particle or compound), with either alternative is within the scope of these dependent claims.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by either US 2004/0248724 A1 (Venigalla et al) or TW 201716352A.
US 2004/0248724 A1 (Venigalla et al) discloses silicate based sintering aids (Abstract). The reference specifies sintering aids in the form of particles, having the formula BaSiO3 or BaxCa1-xSiO3 (0013; 0026). The disclosed alkaline earth silicate powders, which appear as applicant’s preferred inhibitor compounds (instant PGPUB para 0076; 0164; Table 1 example A6), meet the instant “inhibitor” and intended use preamble limitations and therefore anticipate the above listed claims.
TW 201716352A discloses mold flux powder for high aluminum steel. The reference specifies a powder comprising CaO, SiO2, and Al2O3 (Abstract). The disclosed powders, which appear as applicant’s preferred inhibitor compounds (instant PGPUB para 0076; 0098; 0103), meet the instant “inhibitor” and intended use preamble limitations and therefore anticipate the above listed claims.
The references are anticipatory.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
The remaining references listed on forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK T KOPEC whose telephone number is (571)272-1319. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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, Robert Jones can be reached at 5712707733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK KOPEC/Primary Examiner, Art Unit 1762
MK
June 5, 2026
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