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/Restrictions
Applicant’s election without traverse of claims 1-2 in the reply filed on 5/10/2026 is acknowledged.
Claim Rejections - 35 USC § 112
Claims 1-2 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.
The term “needle like” in claim 1 is a relative term which renders the claim indefinite. The term “needle like” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear the metes and bounds of when something would be considered “needle like” and when not.
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 like structure (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).
Conclusion
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/PETER KEYWORTH/Primary Examiner, Art Unit 1777
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