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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant amended claim 1 to recite “wherein the insulating coating film does not contain any metal phosphates other than lithium phosphate, aluminum phosphate, zinc phosphate, magnesium phosphate, calcium phosphate, strontium phosphate, titanium phosphate, cobalt phosphate, manganese phosphate, nickel phosphate, molybdenum phosphate, or combinations thereof”. As support for the amendment, applicant points to paragraphs 0046, 0047, 0049, and 0050 of the present specification. However, there is no support to recite “wherein the insulating coating film does not contain any metal phosphates other than lithium phosphate, aluminum phosphate, zinc phosphate, magnesium phosphate, calcium phosphate, strontium phosphate, titanium phosphate, cobalt phosphate, manganese phosphate, nickel phosphate, molybdenum phosphate, or combinations thereof”.
The cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453.
The insertion of the above phraseology as described above positively excludes all metal phosphates other than those listed, however, there is no support in the present specification for such exclusions. While the present specification is silent with respect to the use of additional metal phosphates other than those listed, it is noted that as stated in MPEP 2173.05(i), the “mere absence of a positive recitation is not the basis for an exclusion.”
Claims 2-6 are rejected as depending on rejected Claim 1.
Allowable Subject Matter
Claim 8 is allowed.
Oshima does not disclose a coating consisting of organic resins, nitrites, and metal phosphates as claimed.
Response to Arguments
In light of Applicant’s amendments filed 07/15/2026, the 35 USC 103 rejections of record over Oshima are withdrawn.
New grounds of rejection of Claim 1-6 are set forth above.
Conclusion
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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