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 .
Response to Amendment
The amendment filed on 12/08/2025 has been entered.
Claims 1, 4, and 7, 9-13, and 15-21 are pending in the application.
Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least Pg. 3, lines 18-19, Pg. 5, lines 1-19 and Pg. 9, line 12-16 of the instant specification.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
Applicant argues on Pg. 6 that there is no formulation in Blanchard that “consists” of the compounds of base claim 15, as Blanchard requires at least the inclusion of an acid. Applicant argues the closed transitional phrase “consists” requires the interpretation of Blanchard cannot anticipate the claim.
However, Blanchard teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Examiner notes the phrase “disperse medium” is broadly interpreted such that rare earth oxide particles in a liquid dispersing medium is considered to read on the claim. While the claims are interpreted in view of the instant specification, limitations are not imported from the instant specification. In this regard, the term “disperse medium” must be interpreted broadly and since the claim does not limit the “disperse medium” to specific chemicals, a broad range of liquid components was considered to anticipate the claim. This interpretation is supported by the fact that claim 16, which limits the disperse medium to “at least one of the group consisting of water and alcohol” was rejected under 35 USC 103 and was not considered anticipated by Blanchard. Applicant is encouraged to specifically claim their invention.
Applicant argues on Pg. 7-8 regarding claims 1, 4, 7-8, 16-17, and 19 that the prior art Criniere is limited to cerium oxide particles and therefor a skilled artisan would have no rationale to assume the dispersion medium would be the same for other rare earth oxide particles.
However, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The prior art Criniere is applied to claim 1 to teach the limitation of a “formula (D90-D10)/D50 wherein D10, D50, and D90 are cumulative 10%, 50%, and 90% diameters in volume basis particle size distribution, respectively,” where Blanchard does not explicitly teach this formula is used to arrive at the dispersity index.
Criniere teaches a liquid suspension of rare earth oxide particles that display a dispersion index of at most 0.5, where the dispersion index is calculated as equal to (d90-d10)/d50, where d90 is the particle size or diameter for which 90% of the particles have a diameter of less than, d10 is the particle size or diameter for which 10% of the particles have a diameter of less than, and d50 is the average size or diameter of the particles. (Abstract [0001]; [0023]-[0029]). Advantageously, particles displaying a dispersion index calculated by the formula of Criniere are monodisperse, where monodisperse dispersions display improved stability and ease of use ([0003]-[0005]) and can be used in myriad applications including catalysis, anti-UV applications, paints, papers, or cosmetics ([0091]-[0093]).
Accordingly, for the advantage of obtaining a monodisperse dispersion with improved stability, a skilled artisan would be motivated to seek the teachings of Criniere when preparing dispersions of rare earth oxide particles, as Criniere teaches a rare earth oxide (i.e. cerium) is used.
Applicant’s arguments on Pg. 8-9 regarding claims 9-12 and 14 have been fully considered however are directed to the amendment to claim 9 which introduces the claim limitation “wherein the rare earth oxide particles comprise at least one rare earth metal of the group consisting of Y, Gd, Tb, Dy, Ho, Er, Tm, Yb, and Lu.” This amendment was introduced in the amendment filed 12/08/2025, which postdates the non-final rejection mailed 09/08/2025. Upon further search and consideration and as necessitated by the amendment, the 35 U.S.C. 103 rejection for claims 9-12 and 14 of 09/08/2025 is withdrawn and a new grounds of rejection is made under 35 U.S.C. 103 as being unpatentable over Blanchard et al. (US20060005465A1) in view of Criniere et al. (US20100072417A1).
Further, Applicant’s argument on Pg. 10 regarding claim 13 is now moot as the amendment to claim 9, introduced on 12/08/2025, has required a new grounds of rejection to be made under 35 U.S.C. 103 as being unpatentable over Blanchard et al. (US20060005465A1) in view of Criniere et al. (US20100072417A1). The prior art Ota is no longer relied on to teach the limitation of yttrium oxide, but rather Blanchard is. Blanchard teaches the rare earth oxide can be yttrium, expressed as the oxide ([0030], Claim 18; [0035]).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 15, 18, and 20-21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Blanchard et al. (US20060005465A1).
Regarding claim 15, Blanchard teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). Blanchard teaches the grain size characteristics are usually referred to as of the type dn, where n is a number from 1 to 99. This notation designates the particle size for which the size of n % by number of said particles is equal to that size or lower. As an example, a d50 of 3 nanometers means that the size of 50% by number of the particles is 3 nanometers or less ([0038]). Blanchard teaches the particles are dispersed in a dispersing medium ([0041]-[0061]).
Blanchard teaches an example where the d50 of the particles in the dispersion is 2.5 nm ([0127]).
Regarding claim 18, Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). Blanchard further discloses an example where the d50 of the particles are 3 nm ([0147]).
Regarding claims 20-21, Blanchard teaches the rare earth can be selected from cerium, lanthanum, yttrium, neodymium, gadolinium and praseodymium ([0030]).
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 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, 4, 7, 9-13, 16-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Blanchard et al. (US20060005465A1) in view of Criniere et al. (US20100072417A1).
Regarding claim 1, Blanchard teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). Blanchard teaches the grain size characteristics are usually referred to as of the type dn, where n is a number from 1 to 99. This notation designates the particle size for which the size of n % by number of said particles is equal to that size or lower. As an example, a d50 of 3 nanometers means that the size of 50% by number of the particles is 3 nanometers or less ([0038]). Blanchard further teaches that at least 90% of the particles are monocrystalline ([0184]). Blanchard teaching 90% of the particles being monocrystalline would require 90% of the particles to fall within the d50 range taught by Blanchard, allowing calculation of a dispersity index.
Accordingly, calculation of a range of dispersity indexes (S); S=d90-d10/d50) taught by Blanchard from the range taught by Blanchard is possible, where a low end is 5 nm-1 nm / 5 = 0.8 and a high end is 5 nm -1 nm / 1 = 4, for a general range of 0.8 to 4. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Blanchard (d50 1 to 5 nm; dispersity index 0.8 to 4) overlaps with the claimed range (d50 4.1 to 5.3 nm; dispersity index of up to 1). Therefore, the range in Blanchard renders obvious the claimed range.
The claim further require a “formula (D90-D10)/D50 wherein D10, D50, and D90 are cumulative 10%, 50%, and 90% diameters in volume basis particle size distribution, respectively. Blanchard does not explicitly teach this formula is used to arrive at the dispersity index.
Criniere teaches a liquid suspension of rare earth oxide particles that display a dispersion index of at most 0.5, where the dispersion index is calculated as equal to (d90-d10)/d50, where d90 is the particle size or diameter for which 90% of the particles have a diameter of less than, d10 is the particle size or diameter for which 10% of the particles have a diameter of less than, and d50 is the average size or diameter of the particles. (Abstract [0001]; [0023]-[0029]). Advantageously, particles displaying a dispersion index calculated by the formula of Criniere are monodisperse, where monodisperse dispersions display improved stability and ease of use ([0003]-[0005]) and can be used in myriad applications including catalysis, anti-UV applications, paints, papers, or cosmetics ([0091]-[0093]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to determine the dispersity index with the formula taught in Criniere in the product of Blanchard in order to arrive at a monodisperse suspension that displays improved stability and ease of use for a variety of uses, as taught by Criniere.
The claim further requires “the disperse medium is at least one of the group consisting of water and an alcohol,” to which Blanchard is silent.
Criniere teaches the liquid phase of the suspensions may be of various nature, including water, or a water/water-miscible solvent mixture that may be made of alcohols such as methanol or ethanol, glycols such as ethylene glycol, acetate derivatives of glycols, such as ethylene glycol monoacetate, or polyols ([0030]-[0032]). Advantageously, suspensions formed from liquids including water and/or alcohols are stable and can be resuspended if settling does occur ([0040]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse the particles in water and/or alcohol in the product of Blanchard in order to provide a stable suspension that can be easily resuspended if settling occurs, as taught by Criniere.
Regarding claim 4, Blanchard in view of Criniere teach the rare earth oxide particles of claim 1. Blanchard further teaches the rare earth oxide can be yttrium, expressed as the oxide ([0030], Claim 18; [0035]).
Regarding claim 7, Blanchard in view of Criniere teach the rare earth oxide particles of claim 1. Blanchard teaches the rare earths can be selected from cerium, lanthanum, yttrium, neodymium, gadolinium (Gd) and praseodymium ([0030]), where gadolinium meets the claim limitation.
Regarding claim 9, Blanchard teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). Blanchard teaches the grain size characteristics are usually referred to as of the type dn, where n is a number from 1 to 99. This notation designates the particle size for which the size of n % by number of said particles is equal to that size or lower. As an example, a d50 of 3 nanometers means that the size of 50% by number of the particles is 3 nanometers or less ([0038]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Blanchard (d50 1 to 5 nm) overlaps with the claimed range (d50 of up to 50 nm). Therefore, the range in Blanchard renders obvious the claimed range. Blanchard further teaches the rare earths can be selected from cerium, lanthanum, yttrium, neodymium, gadolinium (Gd) and praseodymium ([0030]).
The claim further requires “the disperse medium is at least one of the group consisting of water and an alcohol,” to which Blanchard is silent.
Criniere teaches the liquid phase of the suspensions may be of various nature, including water, or a water/water-miscible solvent mixture that may be made of alcohols such as methanol or ethanol, glycols such as ethylene glycol, acetate derivatives of glycols, such as ethylene glycol monoacetate, or polyols ([0030]-[0032]). Advantageously, suspensions formed from liquids including water and/or alcohols are stable and can be resuspended if settling does occur ([0040]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse the particles in water and/or alcohol in the product of Blanchard in order to provide a stable suspension that can be easily resuspended if settling occurs, as taught by Criniere.
Regarding claim 10, Blanchard in view of Criniere teach the rare earth oxide particles slurry of claim 9 and Blanchard further teaches that at least 90% of the particles are monocrystalline ([0184]). Blanchard teaching 90% of the particles being monocrystalline would require 90% of the particles to fall within the d50 range taught by Blanchard, allowing calculation of a dispersity index.
Accordingly, calculation of a range of dispersity indexes (S); S=d90-d10/d50) taught by Blanchard from the range taught by Blanchard is possible, where a low end is 5 nm-1 nm / 5 = 0.8 and a high end is 5 nm -1 nm / 1 = 4, for a general range of 0.8 to 4. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Blanchard (dispersity index 0.8 to 4) overlaps with the claimed range (dispersity index of up to 1). Therefore, the range in Blanchard renders obvious the claimed range.
The claim further require a “formula (D90-D10)/D50 wherein D10, D50, and D90 are cumulative 10%, 50%, and 90% diameters in volume basis particle size distribution, respectively. Blanchard does not explicitly teach this formula is used to arrive at the dispersity index.
Criniere teaches a liquid suspension of rare earth oxide particles that display a dispersion index of at most 0.5, where the dispersion index is calculated as equal to (d90-d10)/d50, where d90 is the particle size or diameter for which 90% of the particles have a diameter of less than, d10 is the particle size or diameter for which 10% of the particles have a diameter of less than, and d50 is the average size or diameter of the particles. (Abstract [0001]; [0023]-[0029]). Advantageously, particles displaying a dispersion index calculated by the formula of Criniere are monodisperse, where monodisperse dispersions display improved stability and ease of use ([0003]-[0005]) and can be used in myriad applications including catalysis, anti-UV applications, paints, papers, or cosmetics ([0091]-[0093]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to determine the dispersity index with the formula taught in Criniere in the product of Blanchard in order to arrive at a monodisperse suspension that displays improved stability and ease of use for a variety of uses, as taught by Criniere.
Regarding claims 11-12, Blanchard in view of Criniere teach the rare earth oxide particle slurry of claim 9. Blanchard further teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Blanchard (d50 1 to 5 nm) overlaps with the claimed range (d50 up to 5.3 nm (Claim 11); d50 of at least 4.1 nm (Claim 12)). Therefore, the range in Blanchard renders obvious the claimed range.
Regarding claim 13, Blanchard in view of Criniere teach the rare earth oxide particle slurry of claim 9. Blanchard further teaches the rare earth oxide can be yttrium, expressed as the oxide ([0030], Claim 18; [0035]).
Regarding claim 16, Blanchard anticipates the rare earth oxide particle slurry of claim 15 and the claim further requires “the disperse medium is at least one of the group consisting of water and an alcohol,” to which Blanchard is silent.
Criniere teaches the liquid phase of the suspensions may be of various nature, including water, or a water/water-miscible solvent mixture that may be made of alcohols such as methanol or ethanol, glycols such as ethylene glycol, acetate derivatives of glycols, such as ethylene glycol monoacetate, or polyols ([0030]-[0032]). Advantageously, suspensions formed from liquids including water and/or alcohols are stable and can be resuspended if settling does occur ([0040]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to disperse the particles in water and/or alcohol in the product of Blanchard in order to provide a stable suspension that can be easily resuspended if settling occurs, as taught by Criniere.
Regarding claim 17, Blanchard anticipates the rare earth oxide slurry of claim 15 and Blanchard further teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). Blanchard teaches the grain size characteristics are usually referred to as of the type dn, where n is a number from 1 to 99. This notation designates the particle size for which the size of n % by number of said particles is equal to that size or lower. As an example, a d50 of 3 nanometers means that the size of 50% by number of the particles is 3 nanometers or less ([0038]). Blanchard further teaches that at least 90% of the particles are monocrystalline ([0184]). Blanchard teaching 90% of the particles being monocrystalline would require 90% of the particles to fall within the d50 range taught by Blanchard, allowing calculation of a dispersity index.
Accordingly, calculation of a range of dispersity indexes (S); S=d90-d10/d50) taught by Blanchard from the range taught by Blanchard is possible, where a low end is 5 nm-1 nm / 5 = 0.8 and a high end is 5 nm -1 nm / 1 = 4, for a general range of 0.8 to 4. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Blanchard (d50 1 to 5 nm; dispersity index 0.8 to 4) overlaps with the claimed range (d50 4.1 to 5.3 nm; dispersity index of up to 1). Therefore, the range in Blanchard renders obvious the claimed range.
The claims further require a “formula (D90-D10)/D50 wherein D10, D50, and D90 are cumulative 10%, 50%, and 90% diameters in volume basis particle size distribution, respectively. Blanchard does not explicitly teach this formula is used to arrive at the dispersity index.
Criniere teaches a liquid suspension of rare earth oxide particles that display a dispersion index of at most 0.5, where the dispersion index is calculated as equal to (d90-d10)/d50, where d90 is the particle size or diameter for which 90% of the particles have a diameter of less than, d10 is the particle size or diameter for which 10% of the particles have a diameter of less than, and d50 is the average size or diameter of the particles. (Abstract [0001]; [0023]-[0029]). Advantageously, particles displaying a dispersion index calculated by the formula of Criniere are monodisperse, where monodisperse dispersions display improved stability and ease of use ([0003]-[0005]) and can be used in myriad applications including catalysis, anti-UV applications, paints, papers, or cosmetics ([0091]-[0093]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to determine the dispersity index with the formula taught in Criniere in the product of Blanchard in order to arrive at a monodisperse suspension that displays improved stability and ease of use for a variety of uses, as taught by Criniere.
Regarding claim 19, Blanchard anticipates the rare earth particle slurry of claim 15 and 18 and Blanchard further teaches a colloidal dispersion comprising essentially monocrystalline particles based on at least one rare earth oxide (Abstract; [0001]; [0035]). Blanchard teaches the particles in the dispersions have a narrow size distribution, with a d50 in the range from 1 to 5 nm ([0037]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Blanchard (d50 1 to 5 nm) overlaps with the claimed range (d50 up to 5.3 nm (Claim 18); d50 of at least 4.1 nm (Claim 19)). Therefore, the range in Blanchard renders obvious the claimed ranges
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 Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W.T./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738