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 10/24/2025 has been entered. Claims 1-2, and 4-20 are pending in the application. Applicant’s amendments to the claims have overcome the 112(b) rejection previously set forth in the office action mailed 06/24/2025. However, additional claim objections and 112(b) rejections have been identified and are outlined below.
Applicant’s amendments to the claims have not introduced new matter and are supported in the specification in at least [0006] and [0049] of the instant specification.
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive.
Applicant argues on Pg. 8-9 that the claim limitation “the silica (B) is condensate of tetraalkoxysilane (D) and attaches to surfaces of the solid particles (A)” is not taught by Yoshiaki.
However, this limitation is analogous to the limitation in instant claim 2 and was addressed as being unpatentable over Yoshiaki et al. (JP6342637B2 English Translation) in view of Hindelang et al. (WO2018153495A1; cited below is Hindelang et al. US20200172706A1 which is an equivalent English language document) in the action dated 06/24/2025. Accordingly, the 35 USC § 102(a)(1) rejection of claim 1 over Yoshiaki is withdrawn and claims 1, 5, 8-9, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiaki et al. (JP6342637B2 English Translation) in view of Hindelang et al. (WO2018153495A1; cited below is Hindelang et al. US20200172706A1 which is an equivalent English language document).
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). It has already been presented by the Office that Yoshiaki does not explicitly state the silica coating (B) is a “condensate of tetraalkoxysilane.”
Hindelang teaches a hydrophobic silica-coated material (Title; Abstract) where silica particles with accessible Si-OH groups ([0030]-[0031]) are reacted with a hydrophobizing agent which replace the Si-OH groups on the silica to form a hydrophobic coating (([0039]-[0042]). Hindelang teaches the hydrophobizing agent can include tetraalkoxysilanes ([0043]-[0057]). Exchanging the silica hydroxyl groups for the hydrophobizing agents functional groups meets the limitation “hydrolytic condensate” as outlined in the instant specification in at least ([6]; [0026] and [0037]). Advantageously, the hydrophobizing agents taught by Hindelang do not eliminate volatile organic compounds (VOCs) and accordingly do not require extra purification steps ([0025]-[0026]).
Applicant argues that Yoshiaki merely discloses a mixture of inorganic particles while the instant invention obtains “complex particles.”
However, Yoshiaki describes inorganic particles being coated with silica and then further reacting the hydroxy groups on the silica (i.e. the silica that is coating the inorganic particles as a shell) with organosilazane to form particles that can be used in resin materials. In this regard, Yoshiaki clearly meets the limitations required by claim 1 and where Yoshiaki is silent, Hindelang et al. is relied on as described in the rejection.
Applicant argues on Pg. 9-12, claim 4 is directed to silica-coated organic particles and that Furuya teaches coating substrates and not particles. Applicant argues Furuya fails to teach the size of the organic particles having a volume average particle size of 0.01 to 100 µm.
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).
Furuya further teaches the silica particles are coated with the hydrophobizing agent and that the hydrophobic silica particles include in the coating within a range from 1 to 100 parts by mass per 100 parts of the resin component A (Claim 4; col. 12, lines 1-11). Furuya describes the coated material as particles, meeting the limitation of “organic particles.” Where Furuya does not explicitly state “the solid organic particles (A) have a volume average particle size of 0.01 to 100 µm,” Onda is relied on.
Onda teaches a composite particle that is comprised of a resin particle and an inorganic particle coating, where the surface of the inorganic particle is surface treated with at least one of a silane compound, an organosilazane, or an organic compound having an amino group (Abstract; Claims 1-3; Pg. 3, par. 9-12). Onda teaches the resin particles (i.e. the solid organic particles (A)) have a volume average particle size ranging from 0.1-100 µm (Pg. 3, par. 2), while teaching examples using resins with particle sizes ranging from 0.5 µm (Example 5) to 100 µm (Example 8). Advantageously, resin particles falling within the taught size limiting gaps when being dispersed, avoiding locations where the resin composition are not substantially contained (Pg. 3, par. 13).
Claim Objections
Claims 1-2, 4-5, and 7-20 are objected to because of the following informalities:
Regarding claim 1, paragraph 4, the phrase “the silica (B) is condensate” is likely intended to read “the silica (B) is a condensate”
Regarding claim 4, paragraph 3, “the silica (B) is condensate” is likely intended to read “the silica (B) is a condensate”.
Claims 2, 5, 7-9, 16, and 19 all depend from claim 1 and thus are also objected to.
Claims 10-15, 17-18, and 20 all depend from claim 4 and thus are also objected to.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 4-5, 7-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites the limitation "tetraalkoxysilane (D)" in the fourth paragraph. There is insufficient antecedent basis for this limitation in the claim, as the “tetraalkoxysilane (D)” is not introduced earlier in the claim. In the interest of compact prosecution and in view of the instant specification, the limitation is interpreted as being the reagent that provides the surface-coating to the solid particles (A) and not the reagent that reacts with the surface hydroxy groups (B).
Regarding claim 4, the claim recites the limitation "tetraalkoxysilane (D)" in the fourth paragraph. There is insufficient antecedent basis for this limitation in the claim, as the “tetraalkoxysilane (D)” is not introduced earlier in the claim. In the interest of compact prosecution and in view of the instant specification, the limitation is interpreted as being the reagent that provides the surface-coating to the solid particles (A) and not the reagent that reacts with the surface hydroxy groups (B).
Claims 2, 5, 7-9, 16, and 19 all depend from claim 1 and thus, are also rendered indefinite.
Claims 10-15, 17-18, and 20 all depend from claim 4 and thus, are also rendered indefinite.
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, 2, 5, 7-9, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiaki et al. (JP6342637B2 English Translation) in view of Hindelang et al. (WO2018153495A1; cited below is Hindelang et al. US20200172706A1 which is an equivalent English language document).
Regarding claim 1, Yoshiaki teaches an inorganic particle (i.e. solid particles A) containing material that includes an inorganic particle containing silica particles (i.e. silica-coating B) bonded to the surface, where the silica particles are surfaced treated with silane coupling agents or organosilazane (i.e. compounds C) (Claims). Yoshiaki teaches the surface treatment can be performed with silane coupling agents and/or organosilazane compounds, where compounds of the formula -OSiX1X2X3 and -OSiY1Y2Y3 can be used, where X and Y include but are not limited to a phenyl group, vinyl group, epoxy group, methacryl group, amino group, ureido group, mercapto group, isocyanate group, or acrylic group, where X2 and X3 are —OSiR3 or —OSiY4Y5Y6, respectively, Y4 is R, Y5 and Y6 are each R or —OSiR3 (Pg. 4-5, Part 1 and Part 2). Yoshiaki teaches the inorganic particles can include silica, alumina (Al2O3), zirconium oxide (ZrO2), zeolite, titanium oxide (TiO2), aluminum nitride (AlN), silicon carbide (SiC), silicon nitride (Si3N4), titanic acid, Barium titanate (BaTiO3), strontium titanate (SrTiO3), calcium titanate (CaTiO3),aluminum borate, boronite, calcium carbonate, lead oxide, tin oxide, cerium oxide, calcium oxide, trimanganese tetraoxide, and magnesium oxide (Pg. 4, par. 2). Yoshiaki teaches the silica particle material is present from about 0.01% to about 20% based on the total mass of the mixture of inorganic particles (Pg. 4, par. 1). Yoshiaki teaches the particles are not dispersible in liquid medium such as water and can be easily washed with water (Pg. 5, par. 9; Pg. 6, par. 9-12). Yoshiaki teaches an example where a silica inorganic particle is treated with phenyltrimethoxysilane as a silane coupling agent prior to surface treatment with hexamethyldisilazane to provide a particle that could no longer exist in water (Pg. 8-9, Surface Treatment Process; Test Example 1).
Regarding the limitation “the silica (B) is condensate of tetraalkoxysilane (D) and attaches to surfaces of the solid particles (A)”, Yoshiaki further teaches the silane coupling agent and the additional silane coupling agent are hydrolysable and undergo reaction with the inorganic particle being surface treated (Claims; Pg.6, par. 4).
Yoshiaki does not explicitly state the silica coating (B) is a “condensate of tetraalkoxysilane.”
Hindelang teaches a hydrophobic silica-coated material (Title; Abstract) where silica particles with accessible Si-OH groups ([0030]-[0031]) are reacted with a hydrophobizing agent which replace the Si-OH groups on the silica to form a hydrophobic coating (([0039]-[0042]). Hindelang teaches the hydrophobizing agent can include tetraalkoxysilanes ([0043]-[0057]). Exchanging the silica hydroxyl groups for the hydrophobizing agents functional groups meets the limitation “hydrolytic condensate” as outlined in the instant specification in at least ([6]; [0026] and [0037]).
Advantageously, the hydrophobizing agents taught by Hindelang do not eliminate volatile organic compounds (VOCs) and accordingly do not require extra purification steps ([0025]-[0026]).
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 use tetralkoxysilanes in the product of Yoshiaki in order to eliminate VOCs such that additional purification steps need not be performed, as taught by Hindelang.
Regarding claim 2, Yoshiaki in view of Hindelang teach the silica-coated particle of claim 1 and Yoshiaki further teaches the silane coupling agent that forms the silica coating on the inorganic particle preferably has alkoxy groups since they are hydrolysable (Pg. 6, par. 4). Yoshiaki does not explicitly teach using a tetraalkoxysilane to form the silica material B.
Hindelang teaches a hydrophobic silica-coated material (Title; Abstract) where silica particles with accessible Si-OH groups ([0030]-[0031]) are reacted with a hydrophobizing agent which replace the Si-OH groups on the silica to form a hydrophobic coating (([0039]-[0042]). Hindelang teaches the hydrophobizing agent can include tetraalkoxysilanes ([0043]-[0057]). Exchanging the silica hydroxyl groups for the hydrophobizing agents functional groups meets the limitation “hydrolytic condensate” as outlined in the instant specification in at least ([6]; [0026] and [0037]).
Advantageously, the hydrophobizing agents taught by Hindelang do not eliminate volatile organic compounds (VOCs) and accordingly do not require extra purification steps ([0025]-[0026]).
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 use tetralkoxysilanes in the product of Yoshiaki in order to eliminate VOCs such that additional purification steps need not be performed, as taught by Hindelang.
Regarding claim 5, Yoshiaki in view of Hindelang teach the silica-coated particle of claim 1 and Yoshiaki further teaches an organosilazane reagent is used to treat the surface of the silica, where the organosilazane replaces hydroxyl groups present on the surface of the silica particles (Pg. 6, par. 4-6). Yoshiaki further teaches the organosilazane can be hexamethyldisilazane (Pg. 6, par. 4-6), while teaching an example using hexamethyldisilazane (Pg. 8, Test Example 1).
Regarding claim 7, Yoshiaki in view of Hindelang teach the silica-coated particle of claim 1 and Yoshiaki teaches the silane coupling agent that forms the silica coating on the inorganic particle preferably has alkoxy groups that are hydrolysable (Pg. 6, par. 4). Yoshiaki does not explicitly teach using tetramethoxysilane and tetraethoxysilane.
Hindelang teaches the hydrophobizing agent is selected from organosilanes, organosiloxanes, and silicones ([0039]), where the organosilane is preferably represented by the formula R1nR2mSiX4-(n+m), where n and m can be 0, 1, 2, or 3 and the sum of n+m is less than or equal to 3, R1 includes C1-C13 hydrocarbons, aryls, or C1-C15 hydrocarbonoxy groups, and R2 is preferably a C1-C18-hydrocarbon radical, or an aryl radical or C1-C15 hydrocarbonoxy radical ([0043]-[0057]). Hindelang further teaches R1 and R2 include C1 -C8-hydrocarbonoxy radial, particularly preferably a C1-C4 hydrocarbonoxy radical ([0044]) and that X is a C---0 bonded C1 -C1s-hYdrocarbon radical, preferably a C1 -C8-hydrocarbon radical, particularly preferably a C1 -C3 -hydrocarbon radical, or an acetyl radical or a halogen radical, preferably chlorine, or hydrogen or an OH radical ([0047]). R1 and R2 being a C1 hydrocabonoxy chain and X being a C1 hydrocarbon radical with a C-O bond meets the limitation “tetramethoxysilane,” while R1 and R2 being a C4 hydrocabonoxy chain and X being a C4 hydrocarbon radical with a C-O bond meets the limitation “tetraethoxysilane.” Hindelang teaches the hydrophobizing agents can be mixed and added as necessary for the end application ([0059]).
Advantageously, the hydrophobizing agents taught by Hindelang do not eliminate volatile organic compounds (VOCs) and accordingly do not require extra purification steps ([0025]-[0026]).
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 use tetralkoxysilanes, such as tetramethoxysilane and tetraethoxysilane, in the product of Yoshiaki in order to eliminate VOCs such that additional purification steps need not be performed, as taught by Hindelang.
Regarding claim 8, Yoshiaki in view of Hindelang teach the silica-coated particle of claim 1 and Yoshiaki further teaches an organosilazane reagent is used to treat the surface of the silica, where the organosilazane replaces hydroxyl groups present on the surface of the silica particles (Pg. 6, par. 4-6). Yoshiaki further teaches the organosilazane can be hexamethyldisilazane (Pg. 6, par. 4-6), while teaching an example using hexamethyldisilazane (Pg. 8, Test Example 1).
Regarding claim 9, Yoshiaki in view of Hindelang teach the silica-coated particles of claim 1 and Yoshiaki further teaches the particles can be mixed with resin materials, including epoxy in order to form resin combination materials (Pg. 7, par. 1-5).
Regarding claim 16, Yoshiaki in view of Hindelang teach the silica-coated particles of claim 1 and Yoshiaki further teaches the inorganic particles can include silica, alumina (Al2O3), zirconium oxide (ZrO2), zeolite, titanium oxide (TiO2), aluminum nitride (AlN), silicon carbide (SiC), silicon nitride (Si3N4), titanic acid, Barium titanate (BaTiO3), strontium titanate (SrTiO3), calcium titanate (CaTiO3), aluminum borate, boronite, calcium carbonate, lead oxide, tin oxide, cerium oxide, calcium oxide, trimanganese tetraoxide, and magnesium oxide (Pg. 4, par. 2).
Regarding claim 19, Yoshiaki in view of Hindelang teach the silica-coated particles of claim 1 and Yoshiaki further teaches the particles can be used in resin materials (Pg. 6, par. 14-15; Pg. 7, par. 1-4).
Claims 4, 10-15, 17-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (US7727635) in view of Onda et al. (WO2018212279A1 English Machine Translation).
Regarding claim 4, Furuya teaches a coating compositions that comprises a silicone resin obtained by hydrolysis and condensation of an alkoxysilane that includes an alkoxysilane represented by a general formula (R1)mSi(OR2)4-m, where wherein, R1 represents a hydrogen atom, or a substituted or unsubstituted monovalent hydrocarbon group, R2 represents an alkyl group of 1 to 3 carbon atoms, and m represents either 0 or 1) and hydrophobic silica microparticles (Abstract; Title). Furuya teaches the substrate to be coated includes various plastic materials and organic resin substrates including materials (namely, organic resin Substrates), and of these, polycarbonates, polystyrenes, acrylic resins, modified acrylic resins, urethane resins, thiourethane resins, polycondensation products of a halogenated bisphenol A and ethylene glycol, acrylic urethane resins, halogenated aryl group-containing acrylic resins, and Sulfur-containing resins are particularly preferred (col. 16, lines 36-59). Furuya teaches the substrate is coated with components including tetraalkoxysilanes represented by the general formula Si(OR2)4, and partial hydrolysis-condensation products thereof. Specific examples of these tetraalkoxysilanes and partial hydrolysis-condensation products thereof include tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, tetrabutoxysilane, partial hydrolysis condensation products thereof (col. 4, lines 14-34). Furuya further teaches the coating further includes a silazane component on the surface of the silica microparticles (col. 8, lines 18-31), including hexamethyldisilazane (col. 10, lines 49-54).
Regarding the limitation “the silica (B) is condensate of tetraalkoxysilane (D) and attaches to surface of the solid organic particles (A)”, Furuya teaching organic substrates that are coated with components including tetraalkoxysilanes represented by the general formula Si(OR2)4, and partial hydrolysis-condensation products thereof, where specific examples of these tetraalkoxysilanes and partial hydrolysis-condensation products thereof include tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, tetrabutoxysilane, partial hydrolysis condensation products thereof (col. 4, lines 14-34) meet this limitation.
Furuya further teaches the silica particles are coated with the hydrophobizing agent and that the hydrophobic silica particles are include in the coating within a range from 1 to 100 parts by mass per 100 parts of the resin component A (Claim 4; col. 12, lines 1-11). Furuya further teaches the hydrophobicity of the particles is measured by water flotation experiments, where the particles float on water, rather than dispersing until a sufficient quantity of miscible organic solvent is added (col. 7, lines 9-34). As stated above in the claim interpretation section, particles that float in water are considered to be “not dispersible in water,” as supported in at least [0048]-[0049] and [0066] of the instant specification. Furthermore, Furuya teaching the tetrafunctional silane compounds are grafted by hydrolysis condensation to the silica particle surface, further meeting the limitation “hydrolyzate thereof.”
The claims further require “the solid organic particles (A) have a volume average particle size of 0.01 to 100 µm,” to which Furuya does not disclose the size of the silicone resin particles.
Onda teaches a composite particle that is comprised of a resin particle and an inorganic particle coating, where the surface of the inorganic particle is surface treated with at least one of a silane compound, an organosilazane, or an organic compound having an amino group (Abstract; Claims 1-3; Pg. 3, par. 9-12). Onda teaches the resin particles (i.e. the solid organic particles (A)) have a volume average particle size ranging from 0.1-100 µm (Pg. 3, par. 2), while teaching examples using resins with particle sizes ranging from 0.5 µm (Example 5) to 100 µm (Example 8). 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 Onda (volume average particle size ranging from 0.1-100 µm) overlaps with the claimed range (0.01 to 100 µm volume average particle size of solid particles (A)). Therefore, the range in Onda renders obvious the claimed range.
Advantageously, resin particles falling within the taught size limiting gaps when being dispersed, avoiding locations where the resin composition are not substantially contained (Pg. 3, par. 13).
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 use resin particles with sizes ranging from 0.1 to 100 µm in the product of Furuya in order to limit gaps when the composition is dispersed, as taught by Onda.
Regarding claim 10, Furuya in view of Onda teach the silica-coated particles of claim 4 and Furuya teaches the substrate is coated with components including tetraalkoxysilanes represented by the general formula Si(OR2)4, and partial hydrolysis-condensation products thereof. Specific examples of these tetraalkoxysilanes and partial hydrolysis-condensation products thereof include tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, tetrabutoxysilane, partial hydrolysis condensation products thereof (col. 4, lines 14-34).
Regarding claim 11, Furuya in view of Onda teach the silica-coated particles of claim 4 and Furuya teaches the substrate is coated with components including tetraalkoxysilanes represented by the general formula Si(OR2)4, and partial hydrolysis-condensation products thereof. Specific examples of these tetraalkoxysilanes and partial hydrolysis-condensation products thereof include tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, tetrabutoxysilane, partial hydrolysis condensation products thereof (col. 4, lines 14-34). Furuya further teaches the coating comprises trialkoxysilanes represented by the general formula R1Si(OR2)3, and partial hydrolysis-condensation products thereof (col. 4, lines 36-41). Furuya further teaches the coating further includes a silazane component on the surface of the silica microparticles (col. 8, lines 18-31), including hexamethyldisilazane (col. 10, lines 49-54).
Regarding claim 12, Furuya in view of Onda teach the silica-coated particles of claim 4 and Furuya teaches the silicon compounds for coating comprises trialkoxysilanes represented by the general formula R1Si(OR2)3, and partial hydrolysis-condensation products thereof (col. 4, lines 36-41) as well as dialkoxysilanes represented by (R1)2Si(OR2)2 (col. 4, lines 65-67), where R1 includes alkyl and aryl groups and R2 represents alkyl groups of 1 to 3 carbons preferably (col. 4, lines 1-9). Furuya further teaches the coating further includes a silazane component on the surface of the silica microparticles (col. 8, lines 18-31), including hexamethyldisilazane (col. 10, lines 49-54).
Regarding claim 13, Furuya in view of Onda teach the silica-coated particles of claim 4 and Furuya teaches the substrate is coated with components including tetraalkoxysilanes represented by the general formula Si(OR2)4, and partial hydrolysis-condensation products thereof. Specific examples of these tetraalkoxysilanes and partial hydrolysis-condensation products thereof include tetramethoxysilane, tetraethoxysilane, tetraisopropoxysilane, tetrabutoxysilane, partial hydrolysis condensation products thereof (col. 4, lines 14-34).
Regarding claim 14, Furuya in view of Onda teach the silica-coated particles of claim 4 and Furuya further teaches the coating further includes a silazane component on the surface of the silica microparticles (col. 8, lines 18-31), including hexamethyldisilazane (col. 10, lines 49-54).
Regarding claim 15, Furuya in view of Onda teach the silica-coated particles of claim 4 and the claim further requires the resins are “dispersible in epoxy resins.” Furuya does not explicitly discuss this property.
Onda teaches a composite particle that is comprised of a resin particle and an inorganic particle coating, where the surface of the inorganic particle is surface treated with at least one of a silane compound, an organosilazane, or an organic compound having an amino group (Abstract; Claims 1-3; Pg. 3, par. 9-12). Onda teaches the particle comprising these components are dispersed in resins, including epoxy resins, where advantageously the resulting composition can be used in contact with metal wiring while displaying excellent adhesiveness (Pg. 3, par. 13).
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 hybrid composition in epoxy resin in the product of Furuya in order to achieve excellent adhesiveness and apply the composition to metal wiring applications, as taught by Onda.
Regarding claim 17, Furuya in view of Onda teach the silica-coated particles of claim 4 and the claim further requires “the volume average particles size of the solid organic particles (A) is 0.1 to 50 µm,” to which Furuya is silent.
Onda teaches a composite particle that is comprised of a resin particle and an inorganic particle coating, where the surface of the inorganic particle is surface treated with at least one of a silane compound, an organosilazane, or an organic compound having an amino group (Abstract; Claims 1-3; Pg. 3, par. 9-12). Onda teaches the resin particles (i.e. the solid organic particles (A)) have a volume average particle size ranging from 0.1-100 µm (Pg. 3, par. 2), while teaching examples using resins with particle sizes ranging from 0.5 µm (Example 5) to 100 µm (Example 8). 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 Onda (volume average particle size ranging from 0.1-100 µm) overlaps with the claimed range (0.1 to 50 µm volume average particle size of solid particles (A)). Therefore, the range in Onda renders obvious the claimed range.
Advantageously, resin particles falling within the taught size limiting gaps when being dispersed, avoiding locations where the resin composition are not substantially contained (Pg. 3, par. 13).
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 use resin particles with sizes ranging from 0.1 to 50 µm in the product of Furuya in order to limit gaps when the composition is dispersed, as taught by Onda.
Regarding claim 18, Furuya teaches the solid organic particles are silicone resin, which is equivalent to silicone rubber as stated in the instant claim.
Regarding claim 20, Furuya in view of Onda teach the silica-coated particles of claim 4 and Furuya further teaches the coated particles are useful in coating compositions (Title; Abstract).
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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/J.W.T./Examiner, Art Unit 1738 /SALLY A MERKLING/SPE, Art Unit 1738