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 .
Response to Amendment
Upon entry of the amendment filed on , Claim(s) 1, 8 and 12 is/are amended; Claim(s) 16-20 is/are withdrawn; and Claim(s) 9 and 11 is/are cancelled. The currently pending claims are Claims 1-8, 10 and 12-20.
Based on applicants’ remarks and amendments (e.g. the specific solvent and size), the 112 rejections regarding the oversized limitation and the 103 rejections are withdrawn. However, new
They are not found persuasive regarding the purity limitation, and the 112 rejections are maintained.
Claim Rejections - 35 USC § 112
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 1-8, 10 and 12-15 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. The term “substantially pure monoclinic” in claims 1, 6, 7, 12 are relative terms which render the claim indefinite. The term “substantially pure monoclinic” 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 (what would be the threshold for the vanadium oxide to be “substantially pure monoclinic”. In particular, it is noted that the specification discusses the substantially pure feature based on the XRD pattern and the DSC data; however, the showing does not explicitly define the claimed “substantially pure monoclinic” limitation. The specification merely indicates the presence of the VO2 nanoparticles in the monoclinic phase and does not define the “substantially pure” limitation. Claims 2-8, 10 and 12-15 are dependent claims thus inherit the same deficiencies.
Allowable Subject Matter
Claims 1-8, 10 and 12-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments
Applicant’s arguments, see pg. 6-11, filed 22 June 2026, with respect to the 112 rejections regarding the oversized limitation and the 103 rejections have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant's arguments regarding the “substantially pure monoclinic” limitation have been fully considered but they are not persuasive.
Applicant argues that the “substantially pure monoclinic” limitation is specific based on Fig. 3 and the disclosure of the XRD and DSC data (pg. 5-6).
The examiner respectfully disagrees and notes that the specification discusses the substantially pure feature based on the XRD pattern and the DSC data; however, the showing does not explicitly define the claimed “substantially pure monoclinic” limitation. The specification merely indicates the presence of the VO2 nanoparticles in the monoclinic phase based on XRD and DSC but fails to explicitly define the “substantially pure” limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. NISHIO discloses ethylene glycol monoethyl ether (aka 2-methoxy ethanol) as a solvent for VO2 composition.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TRI V NGUYEN whose telephone number is (571)272-6965. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571.270.7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764
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