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, 6-8, 10 and 13-14 currently under examination. Claims 17-23 are withdrawn from consideration. Claims 2-5, 9, 11-12, 15-16 and 24-28 have been cancelled. Claims 1, 6-7 and 13-14 are amended.
Previous Grounds of Rejection
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, 3, 5-8, 10, 13-14 is amended as set forth below. Among them, claims 2-3 and 5 have been cancelled.
New ground of double patenting rejection is set forth below.
Amended Grounds of Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 6-7 and 13-14 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 13-14 of co-pending application 17/044, 670.
Although the conflicting claims are not identical, they are not patentably distinct from each other. Co-pending application 17/044, 670 teaches titanium dioxide particles wherein the mean aspect ratio, mean crystal size and the ratio of (E360 xE308) /E524 overlap the instant claimed ranges. The reference of co-pending application 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).
It reads on the instant claims.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
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, 6-8, 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 mean aspect ratio of especially 1.45 to 1.55:1 (line 10 on page 7), a mean crystal size of 28 nm to 33 nm (line 24 on page 7) which overlaps the instant claimed ranges of 15.0 to 30.0 nm, and E308/E524 is especially 9 (line 32 on page 12), E360 is preferably 50 (line 12 on page 12).
As such, the ratio of (E360 xE308) /E524 is 450 l/g/cm 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 by being rotated while being heated at 610 to 650 0C for 5 minutes to 1 hour” 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 claim 6, TiO2 particles taught by Tooley et al. has E308 preferable 65 l/g/cm (line 15 on page 12) as 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 especially 9 (line 32 on page 12), E360 is preferably 50 (line 12 on page 12).
As such, the ratio of (E360 xE308) /E524 is 450 l/g/cm which is encompassed by 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 (E308/E360)/E524 is 450 l/g/cm and E308 preferable 65 l/g/cm (line 15 on page 12) which reads on the instant claim.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 02/03/2026 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, 6-8, 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, 6-8, 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 aspect ratio. The results presented in the Tables 1-3 do not exhibit the particles having mean aspect ratio. However the current claims recite titanium dioxide particles having mean aspect ratio of 1.4 to 2.9:1.
(2). TiO2 crystal size. The results presented in the Tables 1-3 do not exhibit the particles having a mean crystal size. However the current claims recite titanium dioxide particles having a mean crystal size of 15.0 to 30.0 nm.
(3). (E308xE3so)/E524 value. The results presented in the Tables 1-3 used a selected values of 442, 450 and 497. However the current claims recite the value ≥420.
(4). Calcination Time. The results presented in the Table 1 were affected at a time of 40 minutes. However the instant claim 1 recite a time periodic from 5 minutes to 1 hour for the calcination.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of the critical factors (TiO2 aspect ratio, crystal size,, (E308xE3so)/E524 value, calcination time, etc.) fail to be commensurate in scope with the claims. Therefore, the rejection with respect to claims 1, 6-8, 10 and 13-14 under 35 U.S.C.103 (a) as discussed above.
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
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 YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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/YUN QIAN/ Primary Examiner, Art Unit 1738
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