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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/930,439
`
`07/16/2020
`
`MASASHI SAKAIDA
`
`083710-3083
`
`3059
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`MARTIN, ANGELA J
`
`1727
`
`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/20/2023
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230713
`
`Application No.
`Applicant(s)
`46/930,439
`SAKAIDAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ANGELA J MARTIN
`1727
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`1) Responsive to communication(s) filed on 7/16/20.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
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`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on__; the restriction requirement and election have been incorporatedinto this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-15 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`= Claim(s
`s)__is/are rejected.
`() Claim(s)
`is/are objected to.
`Claim(s) 1-15 are subject to restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
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`

`

`Application/Control Number: 16/930,439
`Art Unit: 1727
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`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Election/Restriction
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`1.
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`This application contains claims directed to the following patentably distinct
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`species:
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`Species | -M is Ca (claims 6, 7);
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`SpeciesII-M is Sr (claims 8, 9);
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`SpeciesIll -M is Ba (claims 10, 11);
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`Species IV M is Al (claims 13, 14);
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`Species V M is Zr (claims 12).
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`The species are independent or distinct because the claims to the different
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`species recite the mutually exclusive characteristics of such species.
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`Species | (claims 1, 2, 3, 4, 5, 15, 6, 7) includes wherein M includes Cain claim 6
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`and claim 7 is dependent on claim 6;
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`SpeciesIl (claims 1, 2, 3, 4, 5, 15, 8, 9) includes wherein M includes Sr and claim
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`9 is dependent on claim 8;
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`SpeciesIll (claims 1, 2, 3, 4, 5, 15, 10, 11) includes wherein M includes Ba and
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`claim 11 is dependent on claim 10;
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`

`

`Application/Control Number: 16/930,439
`Art Unit: 1727
`
`Page 3
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`Species IV (claims 1, 2, 3, 4, 5, 15, 13, 14) includes wherein M includes Al and
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`claim 13 is dependent on claim 12;
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`Species V (claims 1, 2, 3, 4, 5, 15, 12) wherein M includes Zr and claim 14 is
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`dependent on claim 13.
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`In addition, these species are not obvious variants of each other based on the
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`current record.
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`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or
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`a single grouping of patentably indistinct species, for prosecution on the merits to which
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`the claims shall be restricted if no generic claim is finally held to be allowable. Currently,
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`claims 1, 2, 3, 4, 5, and 15 are generic.
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`There is a serious search and/or examination burden for the patentably distinct
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`species as set forth above becauseat least the following reason(s) apply:
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`--the species or groupings of patentably indistinct species have acquired a
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`separate status in the art in view of their different classification;
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`--the species or groupings of patentably indistinct species have acquired a
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`separate status in the art due to their recognized divergent subject matter; and/or
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`--the species or groupings of patentably indistinct species require a different field
`
`of search (e.g., searching different classes/subclasses or electronic resources, or
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`employing different search strategies or search queries).
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`Applicant is advised that the reply to this requirement to be complete must
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`include (i) an election of a species to be examined even though the requirement
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`may be traversed (37 CFR 1.148) and(ii) identification of the claims encompassing
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`the elected species or grouping of patentably indistinct species, including any
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`

`

`Application/Control Number: 16/930,439
`Art Unit: 1727
`
`Page 4
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`claims subsequently added. An argument that a claim is allowable or thatall claims are
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`generic is considered nonresponsive unless accompanied by anelection.
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`The election may be made with or without traverse. To preserve a right to
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`petition, the election must be madewith traverse. If the reply does notdistinctly and
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`specifically point out supposederrors in the election of species requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time
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`of election in order to be considered timely. Failure to timely traverse the requirement
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`will result in the loss of right to petition under 37 CFR 1.144. If claims are added after
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`the election, applicant must indicate which of these claims are readable on the elected
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`species or grouping of patentably indistinct species.
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`Should applicant traverse on the ground that the species, or groupingsof
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`patentably indistinct species from whichelection is required, are not patentably distinct,
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`applicant should submit evidence or identify such evidence now of record showing them
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`to be obvious variants or clearly admit on the record that this is the case. In either
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`instance, if the examiner finds one of the species unpatentable over the prior art, the
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`evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AlA 35
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`U.S.C. 103(a) of the other species.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which depend from or otherwise require all the limitations
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`of an allowable generic claim as provided by 37 CFR 1.141.
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`

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`Application/Control Number: 16/930,439
`Art Unit: 1727
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`Page 5
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`2.
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`A telephone call was made to Mr. Michael Fogarty on 7/11/2023 to request an
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`oral election to the above restriction requirement, but did not result in an election being
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`made (voice message).
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`3.
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`Applicant is reminded that upon the cancelation of claims to a non-elected
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`invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. A request to correct inventorship under 37 CFR 1.48(a)
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`must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that
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`identifies each inventor by his or her legal name and by the processing fee required
`
`under 37 CFR 1.17(i).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ANGELA J MARTIN whosetelephone number is
`
`(571)272-1288. The examiner can normally be reached 7am-4pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Barbara Gilliam can be reached on 571-272-1330. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 16/930,439
`Art Unit: 1727
`
`Page 6
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`
`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
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`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
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`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
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`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`ANGELA J. MARTIN
`Examiner
`
`Art Unit 1727
`
`/ANGELA J MARTIN/
`Examiner, Art Unit 1727
`
`