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 .
Acknowledgement
This Office action responds to the application filed on 8/12/24. Accordingly, pending in this Office Action are claims 1-18.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. In the instant case, the description fails to provide support for “the first layer and the second layer including oxygen (O), and element X, and an element Y as a common element” in claims 1, 17, and 18. Appropriate correction is required. See 37 CFR 1.75 (d) (1) and MPEP § 608.01(o).
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 1-18 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The recited limitation “the first layer and the second layer including oxygen (O), and element X, and an element Y as a common element” in claims 1, 17, and 18 does not have support from the specification for one of ordinary skill in that art to make and use the invention at the time of filing. The claim limitation requires the first (24a) and second (24b) protective layers to have at least three elements O, X, and Y, however, the instant application indicates the protective layer to be a metal oxide and provides examples of suitable materials to be no more than two elements, with one of the elements being oxygen in [0042] and [0116]. Although the specification and claims provide specific composition ratio relationship between element X and Y within the first and second layers, the claim scope is broad enough to encompass virtually any material as X and Y. The specification nonetheless fails to provide enough disclosure to enable one of ordinary skill in the art to make and use the invention without undue experimentation. Therefore, the claims are not enabled.
Claims 2-16 dependent from claim 1, are also rejected under 112(a) first paragraph.
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 1-18 are rejected under 35 U.S.C. 112(b), 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. The recited limitation “the first layer and the second layer including oxygen (O), and element X, and an element Y as a common element” in claims 1, 17, and 18. However, elements X and Y are not defined beyond the composition ratios within the first and the second layers or otherwise understood in the art. It is unclear what element X and Y would be, therefore, claims are indefinite.
Claims 2-16 dependent from claim 1, are also rejected under 112(b) second paragraph.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eva Yan Montalvo whose telephone number is (571)270-3829. The examiner can normally be reached M-TH 9AM-7PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Fristoe can be reached at (571) 272-4926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EVA Y MONTALVO/Supervisory Patent Examiner, Art Unit 2818
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