DETAILED ACTION
This detailed action is in response to the application filed on June 10, 2024, and any subsequent filings.
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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1-23, 26-29, 33, 39, and 40 are objected to because of the following informalities:
In Claim 1, the use of a hyphen in the term “electrically-conductive” in line 3 is inconsistent with the same term used without a hyphen in line 2;
Claims 2-20 each recite “The anode structure” in the preamble which is inconsistent with the recitation of “A catalytic anode structure” in Claim 1 from which each of the claims depend;
In Claim 11, the phrase “consists essentially titanium” is grammatically incorrect;
In Claim 14, an extra space appears after the second comma in line 2;
In Claim 15, the term “electrically conductive metallurgical catalyst layer” is inconsistent with the term “electrically-conductive metallurgical catalyst layer” recited in Claim 1 from which the claim depends;
In Claims 16-19 the term “metallurgical” must appear before “interlayer” to be consistent with how the term is recited in Claim 15 from which the claims depend;
In Claim 21, “(b)” in the third clause is inconsistent with “b)” in the second clause;
In Claims 22 and 23, "electrically conductive solid" must appear before “substrate” in line 1 of each claim to be consistent with "electrically conductive solid substrate" recited in Claim 21 from which each claim depends;
In Claims 22, 23, 26-28, 33, 39, and 40, the use of “(a)” and “(b)” is inconsistent with “a)” and “b)”, respectively, in Claim 21 from which the claims depend; and,
In Claim 29, the space between “atom” and “%” in line 3 is inconsistent with no space as the term is used throughout the claims.
Appropriate correction is required.
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.
Claims 3, 4, 8, and 9 are is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for ruthenium (Spec., Pages 5, 14 (“Pg”)), iridium oxide in the metallurgical catalyst interlayer (Spec., Pg20), a titanium, tantalum, ruthenium, and iridium metallurgical interlayer (Spec., Pg19-20, and , does not reasonably provide enablement for all noble metals, all catalytically active species of iridium in the metallurgical catalyst interlayer, or all titanium, tantalum, ruthenium, and iridium compounds in the metallurgical interlayer. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The specification does not provide sufficient evidence to support enablement of these claims based on the In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), factor analysis below such that undue experimentation would be required to arrive at the claimed invention.
Regarding Claims 3 and 4, the breadth of the claims encompass all noble metals. As to the nature of the invention and the amount of direct provided by the inventor, the invention claims all noble metals. As to the state of the prior art, level of ordinary skill, and predictability in the art, no evidence supports or detracts from enablement. As to the existence of working examples, no working examples for all noble metals has been identified weighing against a finding of enablement. Finally, as to the quantity of experimentation required to make or use the invention, undue experimentation would be required to determine the conditions necessary to retain all noble metals.
Regarding Claim 8 and 9, the breadth of the claims encompass all catalytically active species of iridium in the metallurgical catalyst interlayer. As to the nature of the invention and the amount of direct provided by the inventor, the invention claims all catalytically active species of iridium in the metallurgical catalyst interlayer. As to the state of the prior art, level of ordinary skill, and predictability in the art, no evidence supports or detracts from enablement. As to the existence of working examples, no working examples for all catalytically active species of iridium in the metallurgical catalyst interlayer have been identified weighing against a finding of enablement. Finally, as to the quantity of experimentation required to make or use the invention, undue experimentation would be required to determine the conditions necessary to retain all catalytically active species of iridium in the metallurgical catalyst interlayer.
Regarding Claims 17-19, the breadth of the claims encompass all titanium, tantalum, ruthenium, and iridium compounds in the metallurgical interlayer. As to the nature of the invention and the amount of direct provided by the inventor, the invention claims all titanium, tantalum, ruthenium, and iridium compounds in the metallurgical interlayer. As to the state of the prior art, level of ordinary skill, and predictability in the art, no evidence supports or detracts from enablement. As to the existence of working examples, no working examples for all titanium, tantalum, ruthenium, and iridium compounds in the metallurgical interlayer have been identified weighing against a finding of enablement. Finally, as to the quantity of experimentation required to make or use the invention, undue experimentation would be required to determine the conditions necessary to retain all titanium, tantalum, ruthenium, and iridium compounds in the metallurgical interlayer.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
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.
Claims 1-46 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.
Claim 1 recites “its” in line 2 yet what the generic pronoun references is not clear.
Claim 1 recites the limitation "electrolyte-facing surface" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “this layer” in line 3 yet what layer is meant is not clear.
Claim 1 uses the phrase “consisting essentially of” which renders the claim indefinite (see MPEP 2173.05(h)).
Claim 1 recites a stoichiometric ratio yet does not indicate whether this is based upon atoms or moles.
Claim 1 recites “cobalt : total of antimony and tin” yet what is meant by this mixed use of language and characters is not clear.
A broad limitation together with a narrow limitation that falls within the broad 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 2 recites the broad recitation compounds of antimony and tin, and Claim 1 whose limitations are incorporated into Claim 2 also recites oxides of antimony and tin which is the narrower statement of the limitation. The claim is 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 2 recites a stoichiometric ratio yet does not indicate whether this is based upon atoms or moles.
Claim 2 recites “antimony : tin” yet what is meant by this mixed use of language and characters is not clear.
Claim 3 recites “compound(s)” making the scope of the claim unclear.
Claim 3 recites an oxide yet does not state whether this refers to the noble metals or compounds.
Claim 4 uses the phrase “consisting essentially of” which renders the claim indefinite (see MPEP 2173.05(h)).
Claim 4 recites the limitation “surface decoration” yet what is meant by the limitation is not clear.
Claim 7 recites the “substantially” yet what is considered substantial is not clear.
Claim 7 recites the limitation "catalyst layer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation “valve metal” yet what is meant by the limitation is not clear.
Claim 11 recites the limitation “consists essentially titanium” yet what is meant by the limitation is not clear.
Claim 14 recites “its” in line 2 yet what the generic pronoun references is not clear.
Claim 14 recites the limitation "catalyst layer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites “its” in line 2 yet what the generic pronoun references is not clear.
Claim 16 recites the limitation “dimensionally stable anode composition” yet what is meant by the limitation is not clear.
Claim 18 recites a limitation preceded by “optionally” which renders the claim unclear (see MPEP 2173.05(h)).
Claim 20 recites the limitation "titanium, tantalum, ruthenium or iridium compounds" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 20, the phrase "preferably consist of" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 21 recites the limitation "electrolyte-facing surface" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 uses the phrase “consisting essentially of” which renders the claim indefinite (see MPEP 2173.05(h)).
Claim 21 recites a stoichiometric ratio yet does not indicate whether this is based upon atoms or moles.
Claim 21 recites “cobalt : total of antimony and tin” yet what is meant by this mixed use of language and characters is not clear.
Claim 21 recites the limitation "process solvent" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites drying at a temperature between 55-200°C yet Claim 21 from which the claim depends recites both drying and heat treating at a temperature of at least 450°C.
Claim 23 recites drying at a temperature between 100°C yet Claim 21 from which the claim ultimately depends recites both drying and heat treating at a temperature of at least 450°C.
Claim 27 recites the limitation "metallurgical composition" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation “underlying structure” yet does not provide any indication of what constitutes the underlying structure making the claim unclear.
Claim 28 recites the limitation "metallurgical composition" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites the limitation “underlying structure” yet does not provide any indication of what constitutes the underlying structure making the claim unclear.
Claim 29 uses the phrase “consist essentially of” which renders the claim indefinite (see MPEP 2173.05(h)).
Claim 31 recites a stoichiometric ratio yet does not indicate whether this is based upon atoms or moles.
Claim 31 recites “antimony: tin” yet what is meant by this mixed use of language and characters is not clear.
Claim 33 recites the limitation "metallurgical catalyst layer" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 33 recites the limitation "final anode structure" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 34 recites “tin and antimony compounds where present” implying these compounds could not be present yet Claim 21 from which the claim ultimately depends recites these are present rendering the claim unclear.
Claim 37 recites the limitation “valve metal” yet what is meant by the limitation is not clear.
Claim 38 uses the phrase “consists essentially of” which renders the claim indefinite (see MPEP 2173.05(h)).
Claim 43 recites the limitation "metallurgical catalyst layer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 45 recites an “electrolytic process of claim 34” yet Claim 34 is directed towards a “process for the preparation of a catalytic anode structure for use in an electro-chlorination system” as recited in Claim 21 from which the claim ultimately depends.
Claim 45 recites the limitation "chlorine gas" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Prior Art Rejections
Although an attempt has been made to determine the scope and meaning of the claimed invention, the indefinite limitations are fundamental to understanding the claims and prevent a thorough search of the prior art based upon any cognizable technical features and limitations in the art. Further, "where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art," MPEP 2173.06(II).
Although no rejections based upon the prior art have been made, this does not mean that the prior art does not disclose the intended definite claims. From the limited understanding of the claimed invention, which may or may not be correct, Delfani, “Novel mesoporous Co3O4–Sb2O3–SnO2 active material in high-performance capacitive deionization, RSC Adv., 2022, 12, 907 and Zhang, Chinese Publication No. CN114481206A, appear to disclose, either alone or in combination, the claims of the instant application. A machine translation of Zhang accompanies this detailed action.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
Conclusion
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/PATRICK ORME/Primary Examiner, Art Unit 1779
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