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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8 October 2024 was considered by the examiner.
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 1-11 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.
In regards to independent claim 1, this claim recites the limitation "the release agent" in fourth line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the Office is construing this to refer to the separating agent referenced in the second line of the claim.
Further regarding claim 1, the metes and bounds of the claim cannot be determined due to the phrase ” magnesium having a purity of at least 95%” in the second line of the claim. It is not clear if the powder mixture comprises 95% of magnesium or if magnesium is present in the mixture wherein that magnesium is at least 95% pure. For example, it is not clear if there are powder particles within the powder mixture wherein those particles are made up of magnesium having purity of 95% or more.
Further regarding claim 1, the metes and bounds of the claim cannot be determined since it is not clear what type of percentage is used for determining the purity of magnesium in the second line of the claim. For example, it is not clear if the 95.0% is measured by atomic percentage, weight percentage, volume percentage, etc.
Further regarding claim 1, the metes and bounds of this claim cannot be determined due to the phrase” with up to 2% by weight of the release agent” in the fourth line of the claim. It is not clear if the release agent constitutes up to 2% of the total powder mixture or if the hexagonal boron nitride, graphene oxide, molybdenum sulphide and/or other particles having a hexagonal structure are up to 2% by weight of the release agent weight.
For the purposes of examination the Office is interpreting the claim such that the release agent is referring to the separating agent, magnesium constitutes 95% by weight of the powder mixture, and the release agent constitutes 2% by weight of the powder mixture.
As to claims 2-4, these claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, claims 2-4 are rejected for the reasons set forth above in regards to independent claim 1.
As to claim 3, this claim recites the limitation "separation agent" in second line of the claim. There is insufficient antecedent basis for this limitation in the claim. The Office is interpreting this to refer to the separating agent of independent claim 1.
As to claim 4, this claim recites that “the powder mixture has an initial size of 0 to 5 mm” in the second line of the claim. The metes and bounds of this claim cannot be determined since it is not clear how the powder mixture can have an initial size of 0. For the purposes of examination the Office is interpreting this to be that the powder mixture has an initial size of greater than 0 to 5 mm.
Further regarding claim 4, the recitation that “the powder mixture has an initial size of 0 to 5 mm” in the second line of the claim renders the claim indefinite since it is not clear what is being measured. For example it is not clear if the material itself has this overall dimension or if the particles within this mixture have this dimension, or another type of measurement is being determined. For the purposes of examination the Office is interpreting this to mean that the particles have the size as set forth in the instant claims.
Finally, regarding claim 4, this limitation makes it unclear what is intended by the initial size. It is not clear if this was the original dimension which was subjected to a process, such as crushing or milling treatment to result in a new modified size or if this was a measurement of the size at some other point in the production. For the purposes of examination the Office is interpreting this to mean that this is the starting material size which could be subjected to further treatment to result in that size.
In regards to independent claim 5, this claim recites the limitation "the release agent" in fifth line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the Office is construing this to refer to the separating agent referenced in the fourth line of the claim.
Further regarding claim 5, this claim recites the limitation "the magnesium granulate" in seventh line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the Office is construing this to refer to the magnesium in the powder mixture.
Further regarding claim 5, this claim recites the limitation "the material components" in eighth line of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the Office is construing this to refer to the magnesium, separating agent, and the hexagonal structure material.
Further regarding claim 5, the metes and bounds of the claim cannot be determined due to the phrase ” magnesium having a purity of at least 95%” in the third line of the claim. It is not clear if the powder mixture comprises 95% of magnesium or if magnesium is present in the mixture wherein that magnesium is at least 95% pure. For example, it is not clear if there are powder particles within the powder mixture wherein those particles are made up of magnesium having purity of 95% or more.
Further regarding claim 5, the metes and bounds of the claim cannot be determined since it is not clear what type of percentage is used for determining the purity of magnesium in the third line of the claim. For example, it is not clear if the 95.0% is measured by atomic percentage, weight percentage, volume percentage, etc.
Further regarding claim 5, the metes and bounds of this claim cannot be determined due to the phrase” with up to 2% by weight of the release agent” in the fifth line of the claim. It is not clear if the release agent constitutes up to 2% of the total powder mixture or if the hexagonal boron nitride, graphene oxide, molybdenum sulphide and/or other particles having a hexagonal structure are up to 2% by weight of the release agent weight.
For the purposes of examination the Office is interpreting the claim such that the release agent is referring to the separating agent, magnesium constitutes 95% by weight of the powder mixture, and the release agent constitutes 2% by weight of the powder mixture.
As to claims 6-11, these claims depend from independent claim 5 and incorporate the limitations therein. Accordingly, claims 6-11 are rejected for the reasons set forth above in regards to independent claim 5.
As to claim 7, the phrase "namely" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination the Office is interpreting the following phrases to not be part of the claimed invention.
As to claim 9, 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 instance, claim 9 recites the broad recitation at most 500 microns, and the claim also recites at most 100 microns or at most 50 microns which are the narrower statements of the range/limitation. 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) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As to claim 10, 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 instance, claim 10 recites the broad recitation at does not exceed 5%,; at least 95%, and no more than 50 microns and the claim also 2% or 0.1% of its weight; at least 97% or at least 98%, and 10 microns, respectively, which are the narrower statements of the range/limitation. 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) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
As to claim 11, 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 instance, claim 1 recites the broad recitation at most 2.0%, and the claim also recites at most 1.0% or at most 0.8% which are the narrower statements of the range/limitation. 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) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over CN 108411147 (CN ‘147)
In regards to independent claims 1 and 5 and dependent claims 2-3, 6-8, and 10-11, CN ‘147 is directed to a magnesium-based composite material blank. (Lines 11-12) The method of making the magnesium-based composite material comprises mixing a layered structure of MoS2 and Al2O3 particles to obtain Al2O3 particles uniformly coated with MoS2 and then ball milling with magnesium particles. (Lines 164-166) The magnesium constitutes 95 to 99% of the magnesium. (Lines 175) A release agent is not required since no minimum amount is required. The ratio of MoS2 to Al2O3 is 1:3-5. (Line 169) The MoS2 is a material with a hexagonal structure and would fall within the claimed range.
The process of making the magnesium -based composite material blank comprises mixing the MoS2 and Al2O3 particles and ball mixing with magnesium particles. (Lines 164-165) The magnesium alloy scraps or chips are subject to ball milling with the MoS2. (Lines 141-146) This can correspond to the claimed crushing and mixing steps. This step of mixing is also performed simultaneously or with the step of alloying the magnesium and the particles with hexagonal structure, in the same apparatus of a mill. The material is hot extruded molded to obtain a composite material. (Lines 94-96) The temperature is from 300 to 500 C. (Lines 128-129) This is less than the melting point of magnesium.
As to claim 4, this is a product-by-process limitation defined by the size of a starting material which could be modified to different sizes through a variety of different processes. Therefore, the claimed product is not patentably distinct from that of the prior art.
As to claim 9, the materials are placed in a ball mill and formed into a uniform composition and structure. (Lines 250-262) The particle size of the particles is set to 0.1 to 0.5 microns. (Lines 173) Therefore, due to the uniform nature the magnesium would have a size that would fall within the claimed range.
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.
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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