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 .
The election is noted. Claim 9 is withdrawn.
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.
Claim Rejections - 35 USC § 112
Claims 1-8 and 11 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 claim 1, ‘metal liquid’ is unclear is a solution is meant or whether a molten metal (or mercury) is required.
Claim 11 is unclear as to which stirring step is meant (making the seed or the product?).
The ‘preferably clauses’ of claims 2, 3, 5-8 and 11 are improper and unclear if they are required.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim Rejections - 35 USC § 103
Claims 1-7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chu et al. 4696807 taken with Ruszala et al. 4374109.
Chu teaches, especially in ex. 1, adding phosphate, ferric ion and a surfactant and adjusting pH with a base. The solution is aged with stirring, filtered, dried and calcined.
This does not teach a seed, however Ruszala teaches, especially in col. 2, synthesizing the same compound using a seed. Using it in the process of Chu is obvious to make the desired material.
For claims 2, 3, 7 and 11, they are embedded product-by-process limitations within a process claim and thus the process does not actually require the steps recited.
Claim 4 is obvious given the overall stoichiometric ratio of the product-even though not exemplified. Note also Chu col. 10.
For claim 5, the stirring speed is obvious to attain effective mixture of the ingredients, especially given their different solubilities. Ruszala teaches the temperatures.
For claim 6, the recited materials are not actually required and the explicit pH (if different) is obvious to optimize the solubilities of the reagents.
Allowable Subject Matter
Claim 8 is allowable since the surfactants are not taught or obvious, noting that the ‘preferably’ limitation does not limit the claim (and which is taught by Ruszala).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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