DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, in the reply filed on December 31, 2025 is acknowledged.
Applicants argue that the claims, whether directed to components, systems, methods, surfaces or manufacturing techniques, derive from, and depend on, the same underlying structure and are directed to a single unified invention. However the instant application is not a national stage entry, and is therefore evaluated to determine if two or more independent and distinct inventions are claimed, a standard which differs from the unity of invention analysis used to evaluate national stage applications.
Applicants argue that the examiner has erred in treating the outer surface of claim 1 as distinct from the component of claim 11, however applicants’ choice of distinct wording results in distinct claim scopes. In claim 1 applicants define a body with an outside surface layer where the materials are defined by the relative electronegative characteristics between the outside surface layer and the layer of electronegative material (the component comprises both the surface layer and the electronegative material layer). This is in contrast to claim 11 which defines components having a layer of electronegative material, where the materials are limited based on differences in an electronegative property between the electronegative material and the component (as opposed to a surface layer).
With regards to group III applicants have not demonstrated an error in the examiner’s reasoning that the process can be used to form a materially different product.
Applicants argue that a restriction is improper based on a lack of serious search burden however each group of claims is directed to an invention which requires distinct search considerations and strategies. Group II for example defines the relative electronegativity in a distinct manner which requires search in different classifications, using different strategies, and different text queries; Group I is a single component having a different classification, as well as, requiring distinct strategies, and text queries; and Group III has separate classification, as well as, process limitations requiring distinct search queries and strategies.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim 8 sets forth the limitation “a starting means” which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Applicants’ specification has been reviewed with respect to the sections that define features that perform the claimed act of “starting” relative to creating an electric field. Applicants’ detailed description at paragraph 0034 addresses the starting mechanism and will serve to define the scope of “a starting means” which will be understood to comprise structures as set forth in paragraph 0034 and their equivalents.
Claim Objections
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). Applicants’ claims define “an electronegative characteristic” however the term “electronegative characteristic” could not be found in applicants’ specification. Applicants reference the electronegativity value of magnesium in the specification at paragraph 0026, however an electronegative characteristic is a broader term than electronegative value. While a Pauling scale value is a measure of the electronegative characteristic of an element, not all materials have a Pauling value and alternate measures are used to characterize electronegative properties such as a work function, or characterizations for other classes of materials such as polymers and ceramics.
Claim Rejections - 35 USC § 112(b)
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 and 10 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 6 sets forth a requirement based on the number of moles of material but is awkward and draws confusion with regards to the material being limited. The phase “comprises of an amount of moles of materials” is grammatically incorrect and references moles “of material” however claim 1 sets forth an outside surface layer being comprised of “a material that has an electromagnetic characteristic”. Claim 6 does not appear to reference back to the material of the outer surface layer as established in claim 1. Do applicants intended to define a new or different material as a part of the material having an electronegative characteristic for the outside surface layer as set forth in claim 1? Further claim 6 limits the layer of electromagnetic material to comprise “of an amount that corresponds to” the amount of moles of material of the outside surface layer”. Applicants do not establish what the amount is, but appear to limit an amount of moles of material of the electronegative material layer relative to the amount of moles of material constituting the outside surface layer. Applicants may consider language such as:
The component of claim 1, wherein the material of the outside surface layer comprises an amount of moles; and wherein the layer of electronegative material comprises an amount of moles that corresponds to the amount of moles of the material of the outside surface layer.
Claim 6 is interpreted for the purposes of examination to require the amount of moles of the material making up the outside surface layer to be the same as the amount of moles of the material of the electronegative material layer.
Claim 10 references “the component material”, however there is no antecedent basis in the claims for a component material. Parent claim 1 sets forth a component which comprises a body having an outside surface layer comprising a material that has an electronegative characteristic, and a layer of electronegative material. It is unclear if applicants intend to reference the material of the outside surface layer, the material of the body as a whole, or the material of the component which is undefined but may be a combination of the outside surface material and the layer of electronegative material. For purposes of examination the “component material” will be considered to be the material of the outside surface layer.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1, 3, 5, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lewin (US Patent 2,617,064).
Regarding applicants’ claim 1, Lewin discloses a sponge cathode including a body (#23) comprising iron and a molybdenum sponge (#24). See figure 3.
The iron body is a body having an outside surface layer comprised of material having an electronegative characteristic (iron has a Pauling value of ~1.8), and the molybdenum sponge is a layer of electronegative material positioned within the iron body having an electronegative characteristic higher than that of the body (molybdenum has a Pauling value of ~2.2).
With regards to the interaction requirement, applicants do not require a particular degree or type of interaction necessary to qualify as being close enough to interact with the outside surface, however the molybdenum sponge is positioned within the iron body such as to have an upper surface appearing flush with with the upper surface of the iron body (figure 3). Because the molybdenum sponge is positioned within the outside surface of the iron body it is close enough to at least the portions of the outside surface of the iron body to interact with the surface to at least some degree.
Regarding applicants’ claim 3, the molybdenum sponge is fully contained within the bounds of the iron body and is positioned within a recess within the iron body (figure 3). The molybdenum sponge is therefore considered to be self-contained within a pocket in the iron body.
Regarding applicants’ claim 5, the molybdenum sponge is positioned within the surface of the iron body is therefore directly adjacent to the outer surface of the iron body and being more electronegative such that it would interact with the surface of the iron body to move electrons away from the outer surface towards the molybdenum sponge.
Regarding applicants’ claim 6, the claims do not define the dimensions of the outside surface layer. Because the outside surface layer can be defined at any reasonable thickness and the amount of molybdenum sponge is defined, then the configuration of Lewin is such that there is a definable thickness within the outside surface of the iron body such that the number of moles of molybdenum is equal to that of the number of moles in the outside surface layer (can be defined any reasonable depth).
Regarding applicants’ claim 10, molybdenum is capable of alloying with iron and therefore the material of the molybdenum sponge is capable of interacting with the material of the iron body to form an alloy.
Claims 1, 3, 5, 6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US Patent 3,682,606).
Regarding applicants’ claim 1, Anderson et al. disclose an aluminum steel composite comprising steel strips encased in aluminum (figure 1 and col. 3 lines 50-52). In an example strips of 17/7 steel are encased in aluminum using aluminum sheets having a thickness of 0.1mm (col. 4 lines 41-56). The aluminum encasing the steel strips is a body having an outside surface layer being comprised of a material that has an electronegative characteristic (aluminum has a Pauling value of ~1.6), where the steel is a layer of electronegative material within the aluminum body having an electronegative characteristic higher than that of the aluminum body. While steel does not have a measurable Pauling value it is comprised of materials having Pauling values greater than aluminum and is therefore considered to be more electronegative than aluminum (iron ~1.8, chromium ~1.7, nickel ~1.9). Applicants require that the layer of electronegative material is close enough to interact with the outside surface, however applicants’ do not limit the type of degree of interaction. Given that the steel is positioned within 0.1mm of the surface in Example 1, and has an electronegativity greater than the outside surface, it would be capable of interacting with the outside surface in some way and to some degree.
Regarding applicants’ claim 3, Anderson et al. disclose steel strips encased in aluminum (figure 1 and column 3 lines 50-52), which is self-contained in a pocket as claimed.
Regarding applicants’ claim 5, the steel is positioned within 0.1mm of the surface based on Example 1, and has an electronegativity greater than the outside surface. Given the proximity to the surface and the steel having a greater electronegativity than the aluminum surface, the steel would interact with the outside surface to move electrons away the outside surface towards the steel strips.
Regarding applicants’ claim 6, the claims do not define the dimensions of the outside surface layer. Because the outside surface layer can be defined at any reasonable thickness and the amount steel strip is defined, then the configuration of Anderson et al. is such that there is a definable thickness within the outside surface of the aluminum body such that the number of moles of steel is equal to that of the number of moles in the outside surface layer (which can be defined any reasonable depth).
Regarding applicants’ claim 10, Anderson et al. disclose interdiffusion between the aluminum and the steel strips (col.3 lines 70-75). The electronegative material can therefore interact with the component material to form an alloy.
Allowable Subject Matter
Claim 2 requires an electromagnetic characteristic value for the electronegative material that is twice that of the electronegative characteristic of the material of the outside surface layer. Lewin and Anderson et al. disclose combinations of electronegative materials such that the electronegative material has a higher electronegative characteristic than the material of the outside surface layer (as discussed above), however the difference is not two times greater. There is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to modify the materials of Lewin or Anderson et al. to achieve a different in electronegative characteristic that is two times or more as claimed.
Claim 4 requires an electronegative material that is liquid. Lewin and Anderson et al. disclose electronegative materials such that the electronegative material has a higher electronegative characteristic than the material of the outside surface layer (as discussed above), however the electronegative materials are not liquid. There is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to modify the materials of Lewin or Anderson et al. to achieve an electronegative material that is liquid.
Claim 7 requires specifically that the electronegative material be selenium and that the outside surface layer material be magnesium. Lewin and Anderson et al. disclose electronegative materials such that the electronegative material has a higher electronegative characteristic than the material of the outside surface layer (as discussed above), however they do not disclose the use of selenium and magnesium. Further, there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to modify the materials of Lewin or Anderson et al. to select selenium and magnesium as the electronegative and surface layer materials.
Claim 8 requires specifically a starting means such as a battery connection or an equivalent structure. Lewin and Anderson et al. disclose electronegative materials such that the electronegative material has a higher electronegative characteristic than the material of the outside surface layer (as discussed above), however they do not disclose a starting means. Further, there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to modify the materials of Lewin or Anderson et al. to include a batter connection or equivalent structure.
Claim 9 Lewin and Anderson et al. disclose electronegative materials such that the electronegative material has a higher electronegative characteristic than the material of the outside surface layer, however they do not disclose the electronegative material to interact with the outside surface layer to polarize the outside surface layer negatively. Further, there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to modify Lewin or Anderson et al. to configure the materials, positioning, and/or component structure to achieve a electronegative material that is situated so that the layer will polarize the outside surface layer negatively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/Primary Examiner, Art Unit 1784