DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 13 July 2026 has been entered.
Claim Interpretation
Claim 9 was indicated as “Currently Amended” in the amendment filed on 13 July 2026. However, a review of the claim failed to turn up any amendment to the claim. Accordingly, this indication is interpreted as being an error. If this position is incorrect, Applicant is encouraged to point out the amendments to the claim. If Applicant intended to amend the claim it is encouraged that Applicant submit an amendment setting forth the changes.
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, 3-8, and 14 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.
In regards to independent claim 1, in the amendment filed on 13 July 2026, Applicant amended claim 1 to change the area fraction of the precipitate from percent to per ten thousand. Applicant submitted remarks setting forth that the amendment was to correct a typographical error and that it does not change the intended scope of the claim and is consistent with the originally filed disclosure. Applicant further asserted that no new matter was added. However, this amendment changes the scope of the claim and is not supported by the originally filed disclosure.
A review of the application as originally filed failed to turn up any disclosure, either explicit or implicit, setting forth any teaching of the area fraction being within 1 to 10 per ten thousand. First, the claims as originally filed consistently set forth the use of percent for the range and not a per ten thousand. Second, the specification consistently sets forth the use of percent rather than per ten thousand. (See Specification Page 3, Lines 5-7; Page 14, Lines 7-14; and Table 2) The specification explicitly teaches the range and values as a percent and not per ten thousand. The specification does not provide an implicit teaching of the range being per ten thousand.
The newly claimed range of 1 to 10 per ten thousand does not fall within or even overlap the originally claimed range or the range that was originally disclosed. The newly claimed range of 1 to 10 per thousand corresponds to 0.01 to 0.1%. Therefore, the newly claimed range sets forth values that were not previously disclosed. Thus, the newly claimed range constitutes new matter.
As to claims 3-8 and 14, these claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, these claims are rejected for the reasons set forth above in regards to independent claim 1.
Allowable Subject Matter
Claims 9-13 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
Examiner interviews are available via telephone, in-person, 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 http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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