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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/13/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-17 are 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.
Claim 14 recites “(a) providing powder by a process comprising: hydrogenating metal to form a metal hydride; mechanically grinding the metal hydride into a plurality of particles; and dehydrogenating the metal hydride particles;(b) providing the dehydrogenated particles as powder by further subjecting the dehydrogenated particles to plasma atomization”.
However, [0009] of instant publication application states “Prior to step (a), the powder may be provided by a process including, consisting essentially of, or consisting of plasma densification and/or plasma atomization. Prior to step (a), the powder may be provided by a process including, consisting essentially of, or consisting of (i) hydrogenating metal to form a metal hydride, (ii) mechanically grinding the metal hydride into a plurality of particles, and (iii) dehydrogenating the metal hydride particles.” There is nothing in para.0009 states which “prior to step a)” comes first. The claim requires specific sequence for step (a) and step (b). In particular, produce the dehydrogenating the metal hydride particles and then use the dehydrogenated particles for the plasma atomization. Again, para.0009 does not teach or suggest that plasma atomization for powder comes before or after dehydrogenating the metal hydride particles.
In addition, [0024] of instant publication application states “Furthermore, it is to be understood that the features of the various embodiments described herein are not mutually exclusive and may exist in various combinations and permutations”. This paragraph does not suggest any specific embodiment for method step sequence. Examiner noted that any particular embodiment must be clearly describe in the specification to be considered.
Allowable Subject Matter
Claims 1-8, 11-12, 18-20 and 23 are allowed.
The allowability cannot be determined due to 35 USC 112 1st paragraph above.
Response to Arguments
Applicant's arguments filed 02/13/2026 have been fully considered but they are not persuasive.
Applicant argues “claims 1 and 18 as amended are patentable” on page 1 of remark.
In response, the amendment to claims overcome prior art of record.
Applicant argues “claim 14 as amended is patentable … Claim 14 is amended to recite, in part, “(b) providing the dehydrogenated particles as powder by further subjecting the dehydrogenated particles to plasma atomization”. Paragraphs [0009], [0011], [0013], [0017], [0019] each state: “the powder may be provided by a process including … plasma atomization.”
Applicant further submits that powder may be provided using multiple processes in any of a variety of combinations. Paragraph [0024] recites that “the features of the various embodiments … may exist in various combinations and permutations”. Thus, one skilled in the art would understand the disclosure to include included the claimed method. Further referring to paragraph [0034] of the specification as filed, it is expressly disclosure that powder may be generated via hydrogenating metal, grinding the hydride, and dehydrogenating the particles.
Applicant respectfully submits that claim 14 simply reflects what the specification already states. Specifically, the claim language of “providing the dehydrogenated particles as powder by further subjecting the particles to plasma atomization, consistent with the powder-production techniques described herein” directly ties the amendment to specification language and eliminates the sequencing concern.
In response, examiner respectfully disagrees because there is nothing in the specification teach or suggest the specific powder production process. [0009] of instant publication application states “Prior to step (a), the powder may be provided by a process including, consisting essentially of, or consisting of plasma densification and/or plasma atomization. Prior to step (a), the powder may be provided by a process including, consisting essentially of, or consisting of (i) hydrogenating metal to form a metal hydride, (ii) mechanically grinding the metal hydride into a plurality of particles, and (iii) dehydrogenating the metal hydride particles.” There is nothing in para.0009 states which “prior to step (a)” comes first. The claim requires specific sequence for step (a) and step (b). In particular, produce the dehydrogenating the metal hydride particles and then use the dehydrogenated particles for the plasma atomization. Again, para.0009 does not teach or suggest that plasma atomization for powder comes before or after dehydrogenating the metal hydride particles.
In addition, [0024] of instant publication application states “Furthermore, it is to be understood that the features of the various embodiments described herein are not mutually exclusive and may exist in various combinations and permutations”. This paragraph does not suggest any specific embodiment for method step sequence. Examiner noted that any particular embodiment must be clearly describe in the specification to be considered.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY CHOU whose telephone number is (571)270-7107. The examiner can normally be reached Mon-Friday.
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/JIMMY CHOU/Primary Examiner, Art Unit 3761