DETAILED ACTION
Response to Amendment
The preliminary amendment filed 11/22/2024 is entered.
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 4-11, 13, 14, 16-18, 20-22, 27, 31 and 34 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.
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 claims there are several instances of progressively narrowing ranges:
Claim 4 has a broad limitation “the intensity IA of peak A is 0 < IB / IA ≤ 0.4” with narrowing ranges [[, or 0.01 ≤ IB / IA ≤ 0.25, or 0.05 ≤ IB / IA ≤ 0.22, or 0.07 ≤ IB / IA ≤ 0.16]]. The examiner recommends deleting the narrowing ranges in brackets above.
Claim 5 has a broad limitation of “199:1 - 1:1” with narrowing ranges [[, or 99:1 - 3:1, or 50:1 - 8:1]]. The examiner recommends deleting the bracketed language.
Claim 6 has a broad limitation of “at least 85 wt%” with narrowing ranges [[, or at least 90 wt%, or at least 92 wt%]]. The examiner recommends deleting the bracketed language.
Claim 7 has a broad limitation of “at least 80 wt%” with narrowing ranges [[, at least 90 wt%, or at least 95 wt%]]. The examiner recommends deleting the bracketed language.
Claim 8 contains a range of ranges which start at 0 for M(III) and M(II). The examiner recommends changing the “further comprising” to a wherein clause --wherein M(III) and/or M(II) are present at greater than 0 at% relative to all cations--. (greater than 0 at% completely overlaps all other ranges, e.g. greater than 0.1 at% and greater than 1 at%.)
Claim 9 contains the broad limitation “≥ 0.05 at%” with narrowing ranges [[or ≥ 0.5 at% or ≥ 0.6 at%]]. The examiner recommends deleting the bracketed language.
Claim 10 contains the broad limitation “at least 0.3 : 1” with narrowing ranges [[, or at least 0.4 : 1, or 0.42 : 1]]. It is also not clear if 0.5 : 1 is supposed to be the upper limit on the range or the “highest lower” limit due to the “at least” language.
Claims 13 and 14 define M(III) and M(II) as potentially being one of two elements or alternatively requiring a single element. This is another form of broad limitation and narrow limitation. However, MPEP 2173.05(h) states that Markush groups of diminishing scopes should not in itself be sufficient for an objection/rejection. However, a rejection can be made if it results in undue multiplicity. In this instance, the broader range clearly covers the narrower range making the language [[; or wherein M(III) is Cr]] and [[; or wherein M(II) is Zn]] unduly multiplicative. Form of the claim can and should be improved before allowance.
Claim 16 contains a broad limitation “0.1-100 µm” with narrowing ranges [[, or 0.5-50 µm, or 1-20 µm]]. The examiner recommends deleting the bracketed language. The examiner also recommends deleting [[in the range]].
Claim 17 contains a broad limitation “0.1-100 m2/g” with narrowing ranges [[, or 0.25-50 m2/g, or 0.5-20 m2/g]]. The examiner recommends deleting the bracketed language. The examiner also recommends deleting [[in the range]].
Claim 18 contains a broad limitation “greater than 180 nm” with narrowing ranges [[, or greater than 200nm, or greater than 225nm, or greater than 250nm]]. The examiner recommends deleting the bracketed language.
Claim 20 contains a broad limitation of “≤ 5 at%” with narrowing ranges [[or ≤ 1 at% or ≤0.5 at%]]. The examiner recommends deleting the bracketed language.
Claim 21 similar to claims 13 and 14 contains Markush groups of diminishing scope. The groups (ii) and (iii) sic are alternatives with diminishing scope that are unduly multiplicative. The narrowing Markush groups should be deleted or put into depending claims.
Claim 22 contains a broad limitation “≤ 5 at%” with a narrowing range of [[or ≤ 1 at%]]. The examiner recommends deleting the bracketed language.
Claim 27 contains a broad limitation “ at least 25 wt.%” with narrowing range of [[at least 50 wt.%, or at least 75 wt.%]] and [[or wherein the mixed-phase oxide is the sold active electrode material in the electrode]] (i.e. 100 wt%). The examiner recommends deleting the bracketed language.
Claim 31 contains a broad limitation “230 mA/g or more” with narrowing ranges [[, or 1000 mA/g or more or 2000 mA/g or more, or 4000 mA/g or more]]. The examiner recommends deleting the bracketed language.
Claim 34, similar to claims 13, 14 and 21 contain Markush groups of diminishing scope. Again, the groups (ii) and (iii) are alternatives with diminishing scope which make them unduly duplicative. The narrowing Markush groups should be deleted or put into depending claims.
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 required feature of the claims.
Allowable Subject Matter
Claims 1-3, 12, 15, 19, 23-26, and 28-30 are allowed.
Claims 4-11, 13, 14, 16-18, 20-22, 27, 31 and 34 would be allowable if rewritten 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 and to include 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: The examiner was unable to find prior art teaching the active electrode material of interpenetrating crystal structures of TiNb2O7 and Zn2Nb34O87 or an electrode and battery incorporating the same.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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