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
Applicant’s election without traverse of Group II, claims 40-48, in the Telephonic Restriction and Election Summary present in the file wrapper on 07/11/2025 is acknowledged.
Claims 29-39 were previously withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim but were cancelled with the response filed 02/23/2026.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 02/23/2026, has been entered. Claim 40 is amended, claims 29-39 and 41 are cancelled, and claims 49-57 are newly added. Accordingly, claims 40 and 42-57 are pending and considered in this Office Action.
Applicant’s abstract, filed 02/23/2026, is acceptable.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/523,646, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Instant claims 40 and 42-57, directed to methods, do not find adequate support or enablement in the provisional application filing because of the instantly claimed step of ‘performing a chemical reaction using the composition as a catalyst’. Specifically, the provisional filing provides support for providing a composite comprising a substrate and a plurality of nanoparticles chemically bonded to the substrate, the substrate comprising carbon, each nanoparticle comprising at least two different elements but does not provide any support for a method that includes performing a chemical reaction using the composite as a catalyst.
The prior-filed application, Application No, 16/016,395, does provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for instant claims 40, 43, 44, and 47-48 because of, at least, Figure 6C which depicts a schematic diagram illustrating a water spitting apparatus having electrodes made of synthesized CoS nanoparticles with express notations of “hydrogen bubbles” and “oxygen bubbles” which would be understood by persons of ordinary skill as being ‘hydrogen evolution’ reactions and ‘oxygen evolution’ reactions, which are chemical reactions that use the composite as a catalyst.
Thus, claims 40, 43, 44, and 47-48 are accorded an earliest effective filing date of 06/22/2018 which is the actual filing date of the 16/016,395 application.
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 42, 45, 46, and 51-57 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.
Specifically, claim 42 depends from claim 40 and requires the method to include a step of performing a chemical reaction using the composite as a catalyst, wherein the chemical reaction comprises ammonia oxidation. The person having ordinary skill in the art would not understand Applicant to have been in possession of the claimed invention because the as-filed disclosure does not describe the step of performing an ammonia oxidation reaction with the composite catalyst. Additionally, Claim 42 is not an original claim.
To make the findings of fact apparent for the record, the only instance ‘ammonia oxidation’ is at Paragraph 0025 (screenshot below):
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Notably, the nanocatalyst is not the composite material. The composite material is described at Paragraph 0006 as including the substrate and a plurality of nanoparticles formed on the substrate and Figure 6C particularly shows cathodes and anodes of CoS-RGO composites in a water-splitting apparatus. POSITA would not expect an ammonia oxidation to be occur in the water-splitting apparatus shown in Figure 6C. Therefore, Paragraph 0025 is the only portion of the disclosure that addresses ‘ammonia oxidation’ and would be recognized as being limited to describing ‘ammonia oxidation’ as an example of potential uses of the nanocatalyst rather than an actual method.
Thus, the person of ordinary skill in the art would not have understood Applicant to be in possession of the method wherein an ammonia oxidation reaction is performed using the composite as a catalyst.
With regard to claims 45 and 46, the as-filed disclosure does not provide sufficient support such that a person having ordinary skill in the art would understand Applicant to have been in possession of the invention as claimed in claims 45 and 46. Specifically, there is insufficient disclosure of the practice of the claimed method where each nanoparticle comprises 1) at least five different elements and/or 2) each nanoparticle comprises a mixture of at least Pd, Co, Fe, Ni, and Cu creates a composite with such material and then carries out a chemical reaction with the composite as a catalyst.
With regard to new claims 51-53, new independent claim 51 requires the method to include a step of performing a chemical reaction using the composite as a catalyst, wherein the chemical reaction comprises ammonia oxidation. The person having ordinary skill in the art would not understand Applicant to have been in possession of the claimed invention because the as-filed disclosure does not describe the step of performing an ammonia oxidation reaction with the composite catalyst. Additionally, Claims 51-53 are not original claims.
To make the findings of fact apparent for the record, the only instance ‘ammonia oxidation’ is at Paragraph 0025 (screenshot below):
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Notably, the nanocatalyst is not the composite material. The composite material is described at Paragraph 0006 as including the substrate and a plurality of nanoparticles formed on the substrate and Figure 6C particularly shows cathodes and anodes of CoS-RGO composites in a water-splitting apparatus. POSITA would not expect an ammonia oxidation to be occur in the water-splitting apparatus shown in Figure 6C. Therefore, Paragraph 0025 is the only portion of the disclosure that addresses ‘ammonia oxidation’ and would be recognized as being limited to describing ‘ammonia oxidation’ as an example of potential uses of the nanocatalyst rather than an actual method.
Thus, the person of ordinary skill in the art would not have understood Applicant to be in possession of the method wherein an ammonia oxidation reaction is performed using the composite as a catalyst.
With regard to new claims 54-57, the as-filed disclosure does not provide sufficient support such that a person having ordinary skill in the art would understand Applicant to have been in possession of the invention as claimed in claims 54-57. Specifically, there is insufficient disclosure of the practice of the claimed method where each nanoparticle comprises 1) at least five different elements and/or 2) each nanoparticle comprises a mixture of at least Pd, Co, Fe, Ni, and Cu creates a composite with such material and then carries out a chemical reaction with the composite as a catalyst. Claims 54-57 are not original claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 40, 43, 47, and 48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. “FeS2 nanoparticles embedded in reduced graphene oxide toward robust, high-performance electrocatalysts” (Cited in IDS of 07/25/2024).
NOTE: In the interest of the clarity of the record, express mention is made of the analysis in the “Priority” section above that the effective filing date applicable to claims 40, 43, 47, and 48 is 06/22/2018.
Chen et al. was published July 10, 2017 which is within the grace period. However, the Chen et al. reference is available as prior art due to the exception to the grace period exceptions (MPEP 2153.01(a)). Specifically, there are fewer joint inventors on the instant application than on the Chen publication. Thus, it is not apparent who the disclosure is from and the Chen reference qualifies as prior art under 102(a)(1). To be clear, the Chen reference identifies Chen, Xu, LI, Jacob, Kuan, Liu, Wang, Pastel, Salamanca-Riba, Zachariah, and Hu while the instant application identifies Chen, Hu, and Yao. The shared inventors between the reference and the instant application are Chen and Hu.
Regarding claim 40, Chen teaches a method including a plurality of iron disulfide (FeS2) nanoparticles that are in situ loaded and stabilized on reduced graphene oxide (RGO) (Abstract) (meeting claimed ‘providing a composite comprising a substrate and a plurality of nanoparticles chemically bonded to the substrate, the substrate comprising carbon, each nanoparticle comprising at least two different elements’) and performing a chemical reaction using the composite as a catalyst (Abstract; Page 4 Left Column “HER electrocatalytic activity of the synthesized FeS2 nanoparticles was evaluated in a 0.5 M H2SO4 solution…utilizing the FeS2-RGO film as a working electrode”).
Additionally, Chen further teaches that the providing comprises applying a high temperature thermal shock to the substrate with salt precursors thereon so as to convert the salt precursors to the plurality of nanoparticles, the high temperature thermal shock having a temperature of 500-3000K, inclusive and a duration of 1 ms to 5 s, inclusive (Figure 1, utilizing iron pyrite and graphite as raw materials that are transformed into ultrafine FeS2 nanoparticles that are then uniformly distributed on the RGO nanosheets and the transformation process is completed in about 12 ms and at a high temperature of about 2470 K).
Regarding claim 43, Chen teaches the method as applied to claim 40 above and teaches the chemical reaction is a HER, i.e. hydrogen evolution reaction, and the nanoparticles are FeS2- (Page 4 Left Column “HER electrocatalytic activity of the synthesized FeS2 nanoparticles was evaluated in a 0.5 M H2SO4 solution…utilizing the FeS2-RGO film as a working electrode).
Regarding claims 47 and 48, Chen teaches the method as applied to claim 40 above and the substrate is reduced graphene oxide which would be electrically conductive.
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive.
Applicant argues that Applicant’s provisional (emphasis respectfully added by Examiner for clarity) does “repeatedly and explicitly disclosed the use of nanoparticles on a substrate as catalysts for chemical reactions” and then points to places such as “pages 40-51” “pages 78-82” “page 39”, etc. (see 2nd Paragraph of Priority Claim section in Remarks filed 02/23/2026). However, it is unclear what Applicant appears to be pointing to because the provisional filing only has two pages. Again, Applicant’s claims are not entitled to the date of the provisional filing but were given the effective filing date reaching back to the actual filing date of the 16/016,395 application (see Pages 2 and 3 of Non-Final mailed 10/22/2025).
Applicant argues that the specification “explicitly and unambiguously identifies ammonia oxidation’ as a specific catalytic reaction for which the disclosed nanoparticles can be beneficial” and Examiner respectfully disagrees with this characterization of the disclosure and maintains the analysis of the facts provided at Pages 4-5 of the Non-Final mailed 10/22/2025.
With regard to Applicant’s statement that they do not understand the Examiner’s statement at Paragraph 11 on page 5 of the Office Action, i.e., ‘the nanocatalyst is not the composite material’, Examiner points out that there is further analysis that Applicant has not addressed. A screenshot is provided:
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Applicant argues that Figure 3 and Paragraph 0041 of the instant application clearly provide support for multi-element features but Applicant ignores that while multi-element nanoparticles have been disclosed, they have not been sufficiently described in the context of a method of using those particles as part of a composite material that carries out a particular chemical reaction. Examiner maintains the rejections for the reasons of record.
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 ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
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