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 .
Applicant’s Submission of a Response
Applicant’s submission of a response was received on 8/7/2026.
Claim Rejections - 35 USC § 102/103
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(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhu et al., Hydrothermal synthesis of silico-manganese nanohybrid for Cu(II) adsorption from aqueous solution, Applied Surface Science 371, pages 102-111, 2016.
Regarding claim 1, the claims are directed to a produce by process. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Zhu teaches a silicate modified manganese-based material having a nanoscale needle shaped structure (“needle-like nanorods with diameters of 8–18 nm and length of ∼0.3 μm (Fig. 2a). The synthesized SMNA composites were consisted of thinner nanorod/nanowires with diameters in the range of 4–10 nm with different length, and their degree of aggregation decreased with increasing silica content”) (pages 102-105). As such, it appears the product is taught by Zhu and thus anticipates the claims. It is noted that while the Zhu method has many of the same method steps and describes a similar result, the ratio of a divalent manganese source and a heptavalent source are of different ratios than claimed. One could argue that the product could be different based on the different concentrations and ratios even though the same reactions and needle like structure are formed. However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)). Further, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). Therefore, modifying the ratios to be within the range claimed would have been an obvious matter and the resulting silicate modified manganese-based material having a nanoscale needle like structure would also be the same.
Regarding claim 2, Zhu does not explicitly teach the molar ratio of Si to Mn as claimed and it is unclear if such a ratio would change the composition. Therefore, one skilled in the art would either find the Zhu composition to read on the product even if the reagent concentrations are slightly different, or it would have been an obvious matter of optimizing or finding workable ranges of Si to Mn (see claim 1 above for optimization of concentrations).
Response to Arguments
Applicant's arguments filed 8/7/2026 have been fully considered but they are not persuasive. Applicant argues that Zhu fails to teach the needle shaped structure and is considered to be sea urchin shaped. Zhu explicitly states that the actual silicate modified based manganese material is formed from “needle-like nanorods with diameters of 8–18 nm and length of ∼0.3 μm (Fig. 2a). The synthesized SMNA composites were consisted of thinner nanorod/nanowires with diameters in the range of 4–10 nm with different length, and their degree of aggregation decreased with increasing silica content.” Zhu does detail the needle shaped material can form an urchin-like morphology but that does not change the fact that the actual material is formed from needle shaped structures.
Applicant argues that Zhu fails to teach the molar ratio claimed. It is noted that the claims are directed to a product. The claim is a product by process. The claimed product is defined as manganese based material formed as needle shape structures. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The specific ratios of the reagents taught in Zhu is directed to the process of making the product. The product in Zhu appears to the same or similar as claimed. Further, Examiner has provided a basis that finding workable ranges of the different reagents already taught in Zhu is merely finding workable or optimum ranges as part of the 102/103 rejection above.
In response to applicant's argument that Zhu is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Zhu is used as a single reference 102/103 teaching a product. The claim is directed solely to a product made from manganese sources and Zhu teaches a product formed from manganese sources. As such, Zhu is in the field of the inventor’s endeavor as it is directed to a manganese product.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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/PETER KEYWORTH/Primary Examiner, Art Unit 1776
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