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 .
This action is responsive to Applicant’s amendment/remarks filed 12/17/2025.
Claims 1-7 and 9-20 are currently pending.
Response to Amendment & Arguments
The objection of claim 9 is withdrawn in view of the above amendment.
The rejection of claims 1, 2, 4, 6, and 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn in view of the above amendment.
However, the rejection of claims 16-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite as previously set forth in the Office action mailed 09/23/2025 is maintained and has been revised below to reflect the changes in claim scope made by Applicant’s present claim amendment.
Applicant's remarks regarding the 112(b) rejection of claim 16 and request to withdraw the rejection filed 12/17/2025 have been fully considered but are not persuasive to withdraw the 112(b) rejection. The claim remains indefinite albeit for a slightly different reason in view of the present claim amendment. See the 112(b) rejection, below.
The rejection of claims 7, 13, and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Ikesue (EP 2,112,127 A1) is withdrawn in view of the above amendment.
The rejection of claims 7, 13, and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Osipov et al. (RU 2684540 C1) is withdrawn in view of the above amendment.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16-20 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 pre-AIA the applicant regards as the invention.
Claim 16 recites a method for producing a thermochemical energy storage material material comprising a first step of “providing a magnesium-transition metal spinel oxide” followed by a set of five particular steps of “mixing magnesium nitrate, manganese nitrate, and iron nitrate thereby forming a first mixture; adding citric acid to the first mixture thereby forming a second mixture; adding water to the second mixture thereby forming an aqueous solution; evaporating the water from the aqueous solution thereby forming a polymer gel; and calcining the polymer gel until solid to produce magnesium-transition metal spinel oxide doped with a dopant metal, thereby forming the thermochemical energy storage material.” A person of ordinary skill in the art would interpret the claim as essentially requiring providing a magnesium-transition metal spinel oxide and then separately or in parallel mixing the three recited nitrates (that does not recite/include the magnesium-transition metal spinel oxide) to form a first mixture, adding citric acid to the first mixture to form a second mixture, adding water to the second mixture to form an aqueous solution, evaporating the water from the aqueous solution to form a polymer gel, and calcining the polymer gel until solid to produce magnesium-transition metal spinel oxide doped with a dopant metal, thereby forming the thermochemical energy storage material referenced in the claim’s preamble.
However, the five recited “mixing”/“adding”/“evaporating”/“calcining” steps are not related to, nor have any nexus to, the initial “providing” step (there is nothing linking the magnesium-transition metal spinel oxide provided in the first step to the following mixing/adding/evaporating/calcining steps that produce a distinct doped magnesium-transition metal spinel oxide), which renders the claim indefinite. The claim appears to require a magnesium-transition metal spinel oxide be initially provided but then does not perform any positive step with/using the initially provided magnesium-transition metal spinel oxide to produce the later-referenced magnesium-transition metal spinel oxide doped with a dopant metal thermochemical energy storage material. How does the providing step relate to the mixing/adding/evaporating/calcining steps?
Claims 17-20 are also indefinite for their dependency on claim 16.
There is a great deal of confusion and uncertainty as to the proper interpretation of the claim 16 and its dependent claims due to the lack of relation or nexus between method steps therein, and a person of ordinary skill in the art would not be apprised as to the scope of the invention. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
Appropriate correction/clarification is required.
To overcome this 112(b) rejection Applicant is suggested to amend claim 16 by 1) deleting the limitation “providing a magnesium-transition metal spinel oxide;” and 2) at the end of the claim, adding “wherein the thermochemical energy storage material has the formula (MgMn1-xYx)3O4, where Yx represents the dopant metal, a ratio of magnesium (Mg) to manganese (Mn) is 1:1 within a 15% tolerance, and x is greater than 0” (from claim 18).
This suggestion aligns the scope of claim 16 with the modified sol-gel process disclosed in Fig. 5 and elaborated on at [0044] of the original specification that produces the doped spinel oxide with the precursor nitrates without an initial spinel oxide as well as obviates a potential broad 103 rejection over the Irvine et al. reference of record (US 2020/0070139 A1) from the removal of the “providing a magnesium-transition metal spinel oxide” step. Irving et al. teach forming a spinel, albeit a spinel of a formula different from that recited in claim 18, by citric acid-nitrate combustion synthesis method comprising a mixing metal nitrates such as manganese nitrate, iron nitrate, and magnesium nitrate with citric acid and water followed by heating, calcining, and sintering the mixture to obtain the spinel (para. 0025-0026).
Allowable Subject Matter
Claims 1-7 and 9-15 are allowed.
Claim 16 would be allowable if amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action in the manner as suggested above. Claims 19 and 20 would be allowable if claim 16 was amended in the manner as suggested above and Applicant amended claims 19 and 20 to be dependent on claim 16.
The following is a statement of reasons for the indication of allowable subject matter:
Hanamura (US 2006/0243197 A1) teaches a transition metal, preferably Ti or Mn, doped MgAl2O4 spinel of the formulae MgAl2-xTixO4 where x is 0.003 to 0.01 or Mg1-xMnxAl2O4 (abstract and para. 0009-0014). Hanamura teaches the method of making the material comprises mixes an aluminum oxide raw material, a magnesium oxide raw material, and a transition metal (i.e., dopant) raw material together and melting in a furnace (para. 0053). In other words, the reference’s method contains a process of making the doped spinel in a single step – all the precursor compounds, both the primary spinel precursors and dopant precursor are simultaneously converted from distinct oxide precursors directly to the doped spinel. Hanamura fails to teach or suggest a two-step process of first providing a magnesium-transition metal spinel oxide, let alone a magnesium manganese oxide, and then doping the already-present magnesium-transition metal spinel oxide with a dopant, as claimed. Hanamura also fails to teach or suggest a process comprising a forming a mixture of magnesium nitrate, manganese nitrate, iron nitrate, and citric acid that produces a doped magnesium-transition metal spinel oxide after a calcining step.
Ikesue (EP 2,112,127 A1) teaches a method of producing spinel ceramics comprising adding a spinel raw material powder (e.g., MgAl2O4) with various additives (e.g., a sintering aid, dispersant, binder, and optional a colorant oxide), mill mixing the preceding mixture as a slurry, and spray drying prior to additional steps to obtain a final material (abstract, para. 0023, 0049, 0061 and Fig. 1). All of the optional colorant oxides are transition metal oxides (para. 0026 & Fig. 1), and Ikesue specifies the transition metal elements, when present, dope the spinel ceramic (para. 0021, 0062, & 0071). While Ikesue teaches a method comprising providing a magnesium-transition metal spinel oxide and doping the magnesium-transition metal spinel oxide with a transition metal dopant metal to produce the material comprising a spray drying process, Ikesue’s initial spinel is limited to MgAl2O4 and fails to teach or suggest the initial spinel prior to doping comprises magnesium manganese oxide. Ikesue’s dopants are also limited to transition metal compounds and fails to teach or suggest the dopant metal comprises an alkali metal. Ikesue also fails to teach or suggest a process comprising a forming a mixture of magnesium nitrate, manganese nitrate, iron nitrate, and citric acid that produces a doped magnesium-transition metal spinel oxide after a calcining step.
Osipov et al. (RU 2684540 C1) teach of doping MgO-Al2O3 ceramics with iron ions by crystallization of vapors from a laser radiation evaporation process (claim section). A MgO-Al2O3 system corresponds to a spinel of the formula MgAl2O4, and Osipov et al.’s abstract and the claim section also mentioning the compound is a spinel. While Osipov et al. teach a method comprising providing a magnesium-transition metal spinel oxide and doping the magnesium-transition metal spinel oxide with a transition metal dopant metal to produce the material comprising a vapor deposition process, Osipov et al.’s initial spinel is limited to MgAl2O4 and fails to teach or suggest the initial spinel prior to doping comprises magnesium manganese oxide. Osipov et al.’s dopant is also limited to iron and fails to teach or suggest the dopant metal comprises an alkali metal. Osipov et al. also fail to teach or suggest a process comprising a forming a mixture of magnesium nitrate, manganese nitrate, iron nitrate, and citric acid that produces a doped magnesium-transition metal spinel oxide after a calcining step.
King et al. (“Enhancing thermochemical energy storage density of magnesium-manganese oxides,” Energy Storage, 2019, 1(5), e83) teach doped magnesium-manganese oxides for thermochemical energy storage where the dopant metal comprise transition metals, e.g., cobalt, iron, zinc, or nickel (abstract and section 2.1 on page 2). Examples of the doped magnesium-manganese oxides are 2/1/1 MMCo, 2/1/1 MMFe, 2/1/1 MMZn, and 2/1/1 MMNi (Id.) where the numbers refer to the ratio of manganese/magnesium/dopant metal. In other words, King et al.’s magnesium-manganese oxides contain a 2/1 molar ratio of manganese to magnesium and 1/1 molar ratio of magnesium to dopant metal, which are well-outside and do not approach the claimed formula of (MgMn1-xYx)3O4 as recited in claims 1 and 10. There is no further teaching or suggestion in King et al. to simultaneously nearly-equalize the ratio of manganese to magnesium while also significantly lowering the amount of dopant metal from 1 to a low-decimal value and balancing the dopant metal and manganese to sum to 1 to arrive at or approach the expression MgMn1-xYx of the claims 1 and 10. Furthermore, King et al. teach the materials are prepared by a solid-state reaction method where raw powders are the pure metal oxides are mixed according to the desired stoichiometric ratio and heat treated/processed into a powder to obtain the doped material (section 2.1 on page 2). In other words, the reference’s method contains a process of making the doped spinel in a single step – all the precursor compounds, both the primary spinel precursors and dopant precursor are simultaneously converted from distinct oxide precursors directly to the doped spinel. King et al. fail to teach or suggest a two-step process of first providing a magnesium-transition metal spinel oxide, let alone a magnesium manganese oxide, and then doping the already-present magnesium-transition metal spinel oxide with a dopant, as claimed. King et al. also fail to teach or suggest a process comprising a forming a mixture of magnesium nitrate, manganese nitrate, iron nitrate, and citric acid that produces a doped magnesium-transition metal spinel oxide after a calcining step.
Irvine et al. (US 2020/0070139 A1) teach a method of preparing a catalyst from a spinel of formula ANixFe1-xCrO4 where A is Mn or Mg and x is from 0 to 0.75 (abstract). Irvine et al. teach the spinel is prepared by a citric acid-nitrate combustion synthesis comprising mixing stoichiometric amounts of the relevant metal nitrates (e.g., comprising magnesium nitrate, iron nitrate, and manganese nitrate) in water and citric acid, heating the solution to convert it to a powered product (i.e., dry the solution), and then calcining the product powder (para. 0025-0026). However, Irvine et al. fail to teach or suggest a method of providing a magnesium-transition metal spinel oxide and then doping the magnesium-transition metal spinel oxide to obtain a Fe- and/or Ni-doped magnesium manganese oxide of the formula (MgMn-1-xYx)3O4 where x is greater than 0 and less than 0.1304 nor a method of providing a magnesium-transition metal spinel oxide and then doping the magnesium-transition metal spinel oxide by a vapor deposition, spray drying, atomic layer deposition, or sputtering process, as claimed. Irving et al. also fail to teach or suggest their citric acid-nitrate combustion synthesis obtains a doped magnesium-transition metal spinel oxide of the formula (MgMn1-xYx)3O4.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or described above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at https://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
February 20, 2026