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 .
Election/Restrictions
Claims 15-21 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/20/26.
Applicant's election with traverse of Group I in the reply filed on 1/20/26 is acknowledged. The traversal is on the ground(s) that the examiner has not established that a burden would exist in examiner all of the invention. This is not found persuasive because the restriction was made under the Unity of Invention standard because this claim is a § 371 National Stage Entry. There is no requirement that the Office establish that a burden would exist in a Unity of Invention restriction. See, e.g., MPEP §§ 823, 1893.03(d).
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
A polyoxometalate is understood to be a metal oxide cluster (See, e.g., US 2003/0208071 at ¶ 0007). Accordingly, the limitation in claim 1 “converting the formulation on the surface of the substrate to an optical metal oxide layer” is given it’s broadest reasonable interpretation as requiring that the formulation is converted into an optical layer of metal oxides, including the metal oxide clusters of polyoxometalates. Based on applicant’s disclosure, it does not appear that a narrower interpretation precluding the presence of titanium POMs in the final product was intended.
Claim Rejections - 35 USC § 112
Claim 8 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation of a deposition method, and the claim also recites some preferable deposition methods which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (“The effects of transition-metal doping and chromophore anchoring on the photocurrent response of titanium-oxo-clusters,” 2017, Dalton Trans. 46, p. 9639-45).
Claim 1: Yang teaches a process of forming an optical metal oxide layer (Abst.) comprising the steps of: providing a formulation comprising Ti6O4(OPr)10(Cat)2(BA)2 (i.e. claimed one or more titanium POMs) and dichloromethane (i.e. claimed formulation media) (p. 9640, Col. 1 and p. 9641, Col. 1); dipping a substrate in the formulation to form a coating (p. 9641, Col. 1) and drying the formulation to form an optical photoelectrode metal oxide layer (p. 9641, Col. 1).
Claims 2 and 3: Yang teaches the titanium POM is Ti6O4(OPr)10(Cat)2(BA)2 (i.e. claimed three or more titanium atoms and claims Formula 1) (p. 9641, Col. 1).
Claim 4: Yang is silent regarding the total charge. However, Yang teaches a compound which falls within the formula disclosed to have the claimed total charge. Therefore, it is considered inherent that the POM of Yang satisfies the claimed equation.
Claim 5: Yang teaches the use of a T12 POM (p. 9640, Col. 2).
Claim 6: Yang teaches a POM concentration of 0.3 mg/mL of dichloromethane (which has a density of 1.3 mg/mL). Thus, Yang teaches a mass ratio of POM of about 18.75% (0.3/(0.3+1.3)).
Claim 8: Yang teaches dip coating (p. 9641, Col. 1).
Claim 10: Yang teaches that conversion includes a further step of irradiation with a xenon lamp (p. 9641, Col. 1).
Claims 12-13: Yang teaches that the substrate is mesoporous (i.e. claimed has topographical features on the surface) (p. 9641, Col. 1; Fig. 4) and that the formulation covers the surface (i.e. at least partially fills the features (p. 9641, Col. 1; Fig. 4).
Claim Rejections - 35 USC § 103
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.
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang in light of Tong et al. (US 5,464,453).
Claim 7: Yang teaches dip coating, but fails to teach the inclusion of additives. Tong teaches a process of dip coating and explains that surfactants can be included in the coating formulation to adjust characteristics of the coating (6:49-67). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included surfactants in the formulation of Yang with the predictable expectation of success.
Claim 9: Yang teaches dip coating, but fails to teach repeated coating steps. Tong teaches a process of dip coating and explains that the dipping can be repeated to adjust the thickness of the coating (6:49-67). Thus, it would have been obvious to one of ordinary skill at the time of filing to have repeated the coating step of Yang with the predictable expectation of success depending on the desired coating thickness.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yang.
Claim 14: Yang fails to teach an aspect ratio, but teaches that the morphology is determined by the size of the titanium dioxide nanoparticles (Fig. 4; p. 9642). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected an aspect ratio of 1:20 to 20:1 depending on the size of the nanoparticles used.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Yang fails to teach or suggest the claimed baking steps.
Rahman et al. (“Nb2O5, LiNbO3, and (Na, K)NbO3 Thin Films from High-Concentration Aqueous Nb-Polyoxometalates,” 2022, Inorg. Chem. 61, pp. 3586-97) teaches a POM formulation and explains that the formulation is pre-baked and then annealed to convert the POM to a metal oxide. However, Rahman is not directed to titanium POMs and would not have suggested to one of ordinary skill in the art to have added the additional heating steps to Yang with any predictable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712