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 .
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.
Status of Claims
Claims 1, 3-8, 10 and 13-14 currently under examination. Claims 17-23 are withdrawn from consideration. Claims 2, 9, 11-12, 15-16 and 24-28 have been cancelled. Claims 1 and 14 are amended.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/25/2025 has been entered.
Previous Grounds of Rejection
In the light of the cancellation, the rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, with respect to claim 16 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 2, 11 and 14-16 is withdrawn. Among them, claims 2 and 15-16 have been cancelled.
In the light of the amendments, the rejection under 35 U.S.C. 103(a) as being unpatentable over Tooley et al. (WO 2011/077084, applicant submitted in IDS) with respect to claims 1-11 and 13-15 is amended as set forth below. Among them, claims 2, 9, 11 and 15 have been cancelled.
Amended Grounds of Rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1, 3, 5-8, 10, 13 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Tooley et al. (WO 2011/077084, applicant submitted in IDS).
Regarding claim 1, Tooley et al. teach titanium dioxide particles comprising a median volume particle diameter D(v, 0.5) is 85 to 175 nm (claim 2) which is overlaps the instant claimed ranges, and E308/E524 is upto 15 (line 32 on page 12), E360 is upto 50 (line 12 on page 12).
For example, E308/E524 is 12, E360 is 35, the ratio of (E308/E360)/E524 is 420 as the instant claimed ranges.
The reference of Tooley et al. differs from Applicant's recitations of claimed by not disclosing identical ranges. However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
A product-by-process limitation of “ the particles being formed by rotary calcination” of claim 1 is noted. It is considered while the product of the reference is made by a different process, the product made and disclosed is the same as being claimed. see "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802,218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Regarding claims 3-6, TiO2 particles taught by Tooley et al. comprises a mean aspect ratio of 1.45 to 1.55:1 (page 7), a mean crystal size of 25 nm to 35 nm (page 7), a mean width of 20 to 55 nm (claim 3), E308 of from 35 to 65 (page 12), and BET 28.5 m2/g (page 20) which overlaps the instant claimed ranges.
Regarding claims 7 and 13, as discussed above, TiO2 taught by Tooley et al. exhibits the value of E308/E524 is 12, E360 is 35, the ratio of (E308/E360)/E524 is 420, less than 650 as the instant claimed ranges.
Regarding claim 8, TiO2 particles taught by Tooley et al. comprises an inorganic coated alumina as the instant claim (page 5).
Regarding claim 10, TiO2 particles taught by Tooley et al. comprises dopant metal such as Al (lines 10-15 on page 3).
Regrading claim 14, as discussed above, TiO2 taught by Tooley et al. exhibits the value of E360 is 25 I/g/cm, and an E360/E308 ratio of 0.5, therefore E308 is 50; E524 <9 (pages 2-12 and claim 4), such as E524 as being 3. As such, the value of (E308/E360)/E524 is 417 (page 20) which reads on the instant claim (page 2).
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 03/25/2025 and on 05/20/2025 and Declaration under 37 C.F.R. 1.132 submitted by Dr. Amy Goddard on 05/20/2025, with respect to claims 1, 3-8, 10 and 13-14, have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
The Office respectfully disagrees. The unexpected results listed in Tables 1-3 (Declaration page 6) is insufficient to overcome the rejection of claims 1, 3-8, 10 and 13-14 as discussed above because: the results demonstrated in Table 1 are not commensurate in scope with the breadth of the claims, see below as to some specific examples.
For example,
(1). TiO2 volume. The results presented in the Tables 1-3 do not exhibit the particles having a volume based median particle diameter D of >175 nm. However the current claims recite titanium dioxide particles having a volume based median particle diameter D(v,0.5) of greater than 175 nm.
(2). (E308xE3so)/E524 value. The results presented in the Tables 1-3 used a selected ligand values of 442, 450 and 497. However the current claims recite the value ≥400.
(3). Calcination Temperature. The results presented in the Table 1 were affected at a temperature 630 0C. However the instant claim 1 does not recite a calcination temperature.
(4). Calcination Time. The results presented in the Table 1 were affected at a time of 40 minutes. However the instant claim 1 does not recite a time for the calcination.
Tooley et al. teach the calcination were performed at 650 0C for 2-8 hours (pages 19-23).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of the critical factors (TiO2 volume, (E308xE3so)/E524 value, calcination temperature and time, etc.) fail to be commensurate in scope with the claims. Therefore, the rejection with respect to claims 1, 3-8, 10 and 13-14 under 35 U.S.C.103 (a) as set forth in the last office action stands.
As such, the rejection of claim 1 as discussed above is proper and stands.
The rejection for the remaining claims, were either directly or indirectly dependent thereon stands.
Conclusion
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738