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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/22/2025 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendment filed on 09/22/2025 has been entered.
Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least [0040] of the instant specification.
Response to Arguments
Applicant’s arguments, see Pg. 6-8 filed 09/22/2025 with respect to claim 1, have been fully considered however are primarily directed to the claim limitation “wherein the modification layer is obtained by a method comprising: depositing titanium oxide by a hydrolysis reaction of titanium tetrachloride to obtain a dispersion containing titanium oxide particles before modification, and then adding the organic acid to the obtained dispersion to form a modification layer on the surface of the titanium oxide particles” introduced in the amendment filed 09/22/2025, which postdates the final rejection mailed 06/20/2025.
Upon further search and consideration and as necessitated by the amendment, the 35 U.S.C. 103 rejection of 06/20/2025 has been updated and Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kaji et al. (US20170137301A1).
Applicant's remaining arguments filed 09/22/2025 have been fully considered but they are not persuasive.
Applicant presents a Declaration filed 09/22/2025 which is focused on comparing Example 2 ([0062]) and Comparative Example 7 ([0077]) in the instant specification. Applicant summarizes the synthesis of Example 2 and Comparative Example 7, where Example 2 first obtains a dispersion containing titanium oxide particles by hydrolysis of titanium tetrachloride prior to adding citric acid monohydrate whereas Comparative Example 7 adds citric acid monohydrate to a titanium tetrachloride aqueous solution before a hydrolysis reaction. Applicant points to Table 2A that shows differences between Example 2 and Comparative Example 7 in regards to residual anatase percent, surface area (BET, m2/g), and average primary particle size (nm). Applicant argues that the synthesis of Kaji does not suggest step (i) and step (ii) and that therefore such effects obtained in Example 2 (i.e. the inventive instant invention example) would not be expected based on Kaji. Applicant suggests the synthesis of Comparative Example 7 is similar to the synthesis presented by Kaji.
However, while the differences between Example 2 and Comparative Example 7 are noted, Comparative Example 7 does not explicitly disclose the synthesis or teachings as presented in the prior art Kaji. As outlined in the updated rejection below, Kaji further teaches in order to coat the titanium oxide fine particles a wet method can be used in which the organic compound or an aqueous solution or an alcohol solution thereof is added to a slurry formed by dispersing titanium oxide fine particles in water while stirring, and after the stirring is sufficiently conducted, filtration, washing and drying are conducted ([0095]). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Kaji clearly states that the organic acid is added to coat a titanium oxide fine particle dispersion which discloses a method analogous to Example 2 and not Comparative Example 7 in regards to the order of forming a titanium oxide dispersion prior to adding organic acid.
Accordingly, the synthesis and method disclosed by Kaji is not the same as Comparative Example 7 and therefore cannot be assumed to fail to meet the structural limtiations of the claimed product. Further, the disclosure of Kaji makes obvious the newly added limitation of claim 1 regarding the method of producing the modification layer. Due to the disclosure of Kaji describing a method that is not similar to Comparative Example 7, the arguments and attestations in the Remarks and Declaration, respectively, are not convincing.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kaji et al. (US20170137301A1).
Regarding claim 1, Kaji teaches a titanium oxide fine particle that is coated and is prepared with pH control and added at least one organic acid selected from carboxylic acids, polyvalent carboxylic acids, and salts thereof (Abstract; [0074]; [0093]). Kaji teaches the prepared TiO2 particles can be 99.9% pure or more and can consist of purely anatase crystals (Table 1). Kaji teaches organic acids that have a molar mass of 200 g/mol or less (see [0074], at least formic acid, citric acid), that the acid is present from 0.5 to 10% by mass with regard to the titanium oxide fine particle ([0075]), and that the pH range is preferably from a range of 0 to 2 ([0076]). Kaji further teaches an example where 100 g/L of titanium tetrachloride aqueous solution, in terms of TiO2, is added 3% by mass citric acid with regard to TiO2 ([0098]). Converting 3% by mass to mol/L would afford approximately a 0.016 M acid solution, and make obvious the range required by the claim. While Kaji does not explicitly teach an acid concentration in regards to molarity, a skilled artisan viewing the disclosure and examples of Kaji would be apprised of the taught concentration in example 1 ([0098]), and readily be able to adjust the acid concentration within the taught range of 0.5 to 10% by mass in order to arrive at an overlapping range to that required in the claim.
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 Kaji (0.5 to 10% by mass with regard to TiO2; 0 to 2 pH) overlaps with the claimed range (1.5 x 10^-4 mol/L or more and 0.080 mol/L or less; 0.2 to 5 pH). Therefore, the range in Kaji renders obvious the claimed range.
Calculations: 100 g/L TiCl4 relative to TiO2; 3% by mass of citric acid = 3 g/L of citric acid.
3 g citric acid = 0.016 mol = 0.016 mol/L citric acid
Kaji further teaches in order to coat the titanium oxide fine particles “a wet method can be used in which the organic compound or an aqueous solution or an alcohol solution thereof is added to a slurry formed by dispersing titanium oxide fine particles in water while stirring, and after the stirring is sufficiently conducted, filtration, washing and drying are conducted” ([0095]). Kaji further teaches examples where titanium tetrachloride aqueous solution is prepared prior to adding citric acid (see [0098], [0111], [0113]-[0115], [0118]). Accordingly, Kaji clearly describes the titanium tetrachloride aqueous solution as forming a dispersion of titanium oxide fine particles in water which is then added the organic acid that serves to form the coating on the particles (as described in [0095]).
Furthermore, the limitation “wherein the modification layer is obtained by a method comprising: depositing titanium oxide by a hydrolysis reaction of titanium tetrachloride to obtain a dispersion containing titanium oxide particles before modification, and then adding the organic acid to the obtained dispersion to form a modification layer on the surface of the titanium oxide particles” is a product-by-process limitation. Even 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. This point is added in the interest of compact prosecution solely, as the prior art Kaji does disclose the process limitation required by claim 1, in addition to the structural properties of the product as claimed. See MPEP 2113.
Regarding claim 2, Kaji teaches carboxylic acids, for example, formic acid, acetic acid,
and propionic acid; (b) poly(polyvalent)carboxylic acids, particularly, dicarboxylic acids, tricarboxylic acids, for example, oxalic acid and fumaric acid; ( c) hydroxypoly(polyvalent )carboxylic acids, particularly, hydroxydi- or hydroxytri-carboxylic acids, for example, malic acid, citric acid, or tartronic acid; (d) (polyhydroxy)monocarboxylic acids, for example, glucoheptonic
acid or gluconic acid; ( e) poly(polyvalent )(hydroxycarboxylic acids), for example, tartaric acid; (f) dicarboxylic amino acids and the corresponding amide thereof, for example, aspartic acid, asparagine, or glutamic acid; and (g) hydroxylated or non-hydroxylated monocarboxylic amino acids, for example, lysine, serine, or threonine ([0074]).
Regarding claim 3, Kaji teaches the specific surface area of the titanium dioxide particles is preferably from 50 to 400 m2/g. 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 Kaji (surface area of 50 to 400 m2/g) overlaps with the claimed range (300 to 500 m2/g). Therefore, the range in Kaji renders obvious the claimed range.
Regarding claim 4, Kaji teaches organic acids that have a molar mass of 200 g/mol or less (see [0074], at least formic acid, citric acid), that the acid is present from 0.5 to 10% by mass with regard to the titanium oxide fine particle ([0075]), and that the pH range is preferably from a range of 0 to 2 ([0076]). Kaji further teaches an example where 100 g/L of titanium tetrachloride aqueous solution, in terms of TiO2, is added 3% by mass citric acid with regard to TiO2 ([0098]). Converting 3% by mass to mol would afford approximately a 0.016 moles of citric acid relative to 1 mole of Ti in TiO2, providing an acid to titanium molar ratio of 0.016 (0.016 to 1). 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 value taught by Kaji (acid to titanium ratio of 0.016) overlaps with the claimed range (A/T ratio of 1.5 x 10-4 or more and 0.12 or less). Therefore, the value in Kaji renders obvious the claimed range.
Regarding claim 6, Kaji teaches the prepared particle can be 99.9% pure or more and can consist of purely anatase crystals (Table 1). 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 Kaji (99.9% pure or more) overlaps with the claimed range (a content of 100% in anatase crystal phase). Therefore, the range in Kaji renders obvious the claimed range.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kaji et al. (US20170137301A1), and in view of Mozia et al. (Pol. J. Chem. Tech., Vol. 10, No. 3, 2008 4), with evidentiary support provided by Jensen et al. (Journal of Experimental Nanoscience, Vol. 1, No. 3, September 2006, 355–373), as applied to claim 5.
Regarding claim 5, Kaji teaches the titanium dioxide fine particles have a diameter of 1 to 50 nm and are 99.9% pure or more (Table 1; Claim 1), however, Kaji is silent regarding the limitations in claim 5 with calcination up to 700 °C.
Mozia teaches a titanium oxide material that is calcined at 700 °C for 2 h which features an anatase to rutile ratio of 9.4:0.6 (i.e. 94% anatase) and a crystallite size of 28 nm after calcination at 700 °C for 2 h (Table 1; Pg. 43). Mozia teaches the particles calcined at 700 °C have a range of 28-30 nm (Pg. 49), which puts an upper limit on the particles at 30 nm. Mozia teaching the crystallite sizes are 28 nm, with an upper limit of 30 nm, provides an equivalent D100/D50 ratio of 0.93. The upper limit of 30 nm is analogous to D100, which is a conventional term in the art requiring 100% of the particles to be less than or equal to the D100 value. Furthermore, it is noted that Mozia teaches obtaining the particle size dimensions by XRD rather than SEM (electron microscopy), however, as evidenced by Jensen, the determination of particle sizes by SEM provides particle size measurements that are smaller than measurements determined by XRD (Pg. 371-371, Conclusion). Therefore, the particle sizes of Mozia, at 28-30 nm determined by XRD, are at least within the range required by the claim (200 nm or less), regardless of the method of measuring the particle size.
Advantageously, titanium oxide particles with the sizes taught by Mozia, obtained via calcination of the particles at 700 °C for 2 h, provides mainly the anatase phase (94%) which display the highest effectiveness as photocatalysts for the degradation of model compounds (Pg. 49, Conclusions).
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 provide titanium dioxide particles with a high anatase content, particle sizes of 28-30 nm, D100 of 30 nm, and an equivalent D100/D50 ratio of 0.93 in the titanium dioxide of Kaji in order to obtain a mainly anatase titanium dioxide material that displays the highest effectiveness as a photocatalyst as taught by Mozia.
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 Mozia (anatase to rutile ratio of 9.4:0.6 (i.e. 94% anatase); crystallite size of 28 nm after calcination at 700 °C for 2 h; upper limit of 30 nm; D100/D50 ratio of 0.93) overlaps with the claimed range (80% anatase or more, D100 or 200 nm or less; D100/D50 ratio of 1.98 or less). Therefore, the range in Mozia renders obvious the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sonezaki et al. (US20060264520A1); Sonezaki teaches a method of producing surface-modified titanium dioxide fine particles by provide a dispersion of titanium oxide particles and adding a water-soluble polymer comprising carboxyl groups (Abstract; Title). Medved et al. (DE102016009882A1 English); Medved teaches a process for the preparation of anatase titanium dioxide by adding an acid solution comprising organic acids to pre-hydrolyzed titanium oxide hydrate produced from pure titanium tetrachloride (Abstract; Claims). Kawabata et al. (JP4557197B2 English); Kawabata teaches a method of preparing a photocatalyst comprising adding an oxycarboxylic acid to a titanium oxide colloid (Claims; Title). Shi et al. (CN110357154A English); Shi teaches a method of preparing titanium dioxide where a titanium tetrachloride solution is first hydrolyzed with heating to provide a titanium dioxide solution that is then treated with dispersing agents comprising carboxylates (Abstract; Pg. 4, par. 5; Pg. 5, Embodiment 1).
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