DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 11 and 16 are withdrawn.
Claims 1-6 and 12-15 are pending and represent all claims currently under consideration.
Response to Arguments
Applicant’s arguments, see Pre-Appeal Brief Conference Request (pages 1-5), filed 04/27/2026, with respect to the rejections of claims 1-6 and 12-15 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Majima, and further in view of Niwa and Ibaraki.
New Claim Rejections - 35 USC § 103
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 are rejected under 35 U.S.C. 103 as being unpatentable over Majima (Translation of JP 2015009166 A).
Regarding claim 1, Majima teaches a particle mixture comprising organic particles and a dispersion medium (Majima, claim 1), and teaches an example wherein a bead mill is used to prepare the particle mixture comprising organic silicone particles having an average particle size of 0.7 micrometers (i.e., 700 nanometers, "organic nano-particles" as claimed), wherein the organic particles, zirconia beads with a particle diameter of 0.3 mm (i.e., a size between 0.15 mm and 0.9 mm), and a dispersion medium which is methyl ethyl ketone (i.e., a suitable organic solvent as defined by the instant specification, page 8, paragraph 0017) is stirred with a rotor in a grinding chamber (i.e., vessel) of a bead mill at a circumferential speed (i.e., outer peripheral speed) of 0.47 m/sec (i.e., less than 7 m/sec; Majima, page 13, example 1). The use of methyl ethyl ketone as the dispersion medium suggests the bead mill is a wet bead mill as claimed. The transitional terms "comprising" and "containing" are inclusive or open-ended and do not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). Due to Applicant’s use of the above transitional terms, the teachings of Majima read on the invention as claimed.
Majima is considered to be analogous to the claimed invention, because both Majima and the instant invention are in the same field of bead milling organic particles. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Majima under the meaning of 35 U.S.C. 103.
Regarding claim 2, Majima teaches a particle mixture comprising organic particles and a dispersion medium (Majima, claim 1), and teaches an example wherein a bead mill is used to prepare the particle mixture comprising organic silicone particles having an average particle size of 0.7 micrometers (i.e., 700 nanometers, "organic nano-particles" as claimed), wherein the organic particles, zirconia beads with a particle diameter of 0.3 mm (i.e., a size between 0.15 mm and a value calculated by 1.07 mm - 0.11 mm/(m/sec) x [0.47 m/sec] which is equal to about 1.02 mm), and a dispersion medium which is methyl ethyl ketone (i.e., a suitable organic solvent as defined by the instant specification, page 8, paragraph 0017) is stirred with a rotor in a grinding chamber (i.e., vessel) of a bead mill at a circumferential speed (i.e., outer peripheral speed) of 0.47 m/sec (i.e., less than 7 m/sec; Majima, page 13, example 1). The use of methyl ethyl ketone as the dispersion medium suggests the bead mill is a wet bead mill as claimed.
The transitional terms "comprising" and "containing" are inclusive or open-ended and do not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). Due to Applicant’s use of the above transitional terms, the examiner determines that the teachings of Majima read on the invention as claimed.
Claims 3-5 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Majima (JP 2015009166 A) as applied to claims 1-2, further in view of Niwa (US 20120289559 A1; IDS reference, 05/31/2022), and as evidenced by Nikkato. Niwa was cited previously by the Examiner.
Regarding claim 3, Majima teaches all the elements of the current invention as applied to claim 1. Majima does not specifically state the beads comprise partially stabilized zirconia. However, Majima teaches the grinding/dispersion medium ‘170’ can be yttrium-stabilized zirconium oxide (Majima, page 5, 4th paragraph). Niwa teaches a method for producing a nano-sized fine powder (i.e., nanoparticles; Niwa, abstract) by stirring of beads and a slurry (Niwa, claim 21) in a vessel of a wet medium pulverizer which is a bead mill (i.e., a wet bead mill; Niwa, page 1, paragraph 0004) and further teaches the beads can be zirconia beads which are YTZ ball by Nikkato Corporation (i.e., a suitable partially stabilized zirconia as defined by the specification, page 24, paragraph 0063, test example 1; a yttrium-stabilized zirconia as defined by Nikkato, page 2, features).
Majima and Niwa are considered to be analogous to the claimed invention, because Majima, Niwa, and the instant invention are in the same field of preparing nanoparticles via wet milling. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the specific type of zirconia taught by Niwa, because Majima teaches the use of zirconia beads and stabilized zirconium, while Niwa teaches a specific brand which is used in the field.
Regarding claim 4, Majima teaches all the elements of the current invention as applied to claim 1. Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1), but does not specify the direction in which the rotor is inserted. Niwa, however, teaches stirring of the beads and a slurry (Niwa, claim 21) in a vessel of a wet medium pulverizer which is a bead mill (i.e., a wet bead mill) in which the stirring is driven by rotating shaft of disks (i.e., a stirring rotor; Niwa, page 1, paragraph 0004), and further teaches the rotating shaft “2” for rotating the discs “3” (i.e., stirring rotors) is inserted in a vertical direction into the vessel “1” (Niwa, page 35, paragraphs 0168-0170; figure 1) which can be a wet medium pulverizer which is a bead mill (i.e., a wet bead mill; Niwa, page 1, paragraph 0004). It would be reasonable to expect that apparatus of Majima could include the rotor inserted in the vertical direction, as taught by Niwa to be the design of a wet bead mill, because Majima does not specify a direction and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Regarding claim 5, Majima teaches all the elements of the current invention as applied to claim 1. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1),but does not specify the design of the bead mill as claimed. Niwa, however, teaches stirring of beads and a slurry (Niwa, claim 21) in a vessel of a wet medium pulverizer which is a bead mill (i.e., a wet bead mill) in which the stirring is driven by rotating shaft of disks (i.e., a stirring rotor; Niwa, page 1, paragraph 0004), and wherein the slurry comprises solid particles of carbon dioxide (i.e., an organic particle; Niwa, claim 15). Niwa teaches the vessel “1” as a vertical cylinder with an opening at the top, wherein the rotating shaft “2” is inserted through the opening at the top and the discs “3” (i.e., stirring rotors) are attached to the rotating shaft “2” (Niwa, page 35, paragraphs 0168-0170; figure 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a bead mill as designed by Niwa, because Majima does not detail the design of the bead mill apparatus, and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Regarding claim 12, Majima teaches all the elements of the current invention as applied to claim 2. As above, Majima does not specifically state the beads comprise partially stabilized zirconia. However, Majima teaches the grinding/dispersion medium ‘170’ can be yttrium-stabilized zirconium oxide (Majima, page 5, 4th paragraph). Niwa teaches a method for producing a nano-sized fine powder (i.e., nanoparticles; Niwa, abstract) by stirring of beads and a slurry (Niwa, claim 21) in a vessel of a wet medium pulverizer which is a bead mill (i.e., a wet bead mill; Niwa, page 1, paragraph 0004) and further teaches the beads can be zirconia beads which are YTZ ball by Nikkato Corporation (i.e., a suitable partially stabilized zirconia as defined by the specification, page 24, paragraph 0063, test example 1; a yttrium-stabilized zirconia as defined by Nikkato, page 2, features). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the specific type of zirconia taught by Niwa, because Majima teaches the use of zirconia beads and stabilized zirconium, while Niwa teaches a specific brand which is used in the field.
Regarding claim 13, Majima teaches all the elements of the current invention as applied to claim 2. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1), but does not specify the direction in which the rotor is inserted. Niwa, however, teaches stirring of the beads and a slurry (Niwa, claim 21) in a vessel of a wet medium pulverizer which is a bead mill (i.e., a wet bead mill) in which the stirring is driven by rotating shaft of disks (i.e., a stirring rotor; Niwa, page 1, paragraph 0004), and further teaches the rotating shaft “2” for rotating the discs “3” (i.e., stirring rotors) is inserted in a vertical direction into the vessel “1” (Niwa, page 35, paragraphs 0168-0170; figure 1) which can be a wet medium pulverizer which is a bead mill (i.e., a wet bead mill; Niwa, page 1, paragraph 0004). It would be reasonable to expect that apparatus of Majima could include the rotor inserted in the vertical direction, as taught by Niwa to be the design of a wet bead mill, because Majima does not specify a direction and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Regarding claim 14, Majima teaches all the elements of the current invention as applied to claim 2. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1),but does not specify the design of the bead mill as claimed. Niwa, however, teaches stirring of beads and a slurry (Niwa, claim 21) in a vessel of a wet medium pulverizer which is a bead mill (i.e., a wet bead mill) in which the stirring is driven by rotating shaft of disks (i.e., a stirring rotor; Niwa, page 1, paragraph 0004), and wherein the slurry comprises solid particles of carbon dioxide (i.e., an organic particle; Niwa, claim 15). Niwa teaches the vessel “1” as a vertical cylinder with an opening at the top, wherein the rotating shaft “2” is inserted through the opening at the top and the discs “3” (i.e., stirring rotors) are attached to the rotating shaft “2” (Niwa, page 35, paragraphs 0168-0170; figure 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a bead mill as designed by Niwa, because Majima does not detail the design of the bead mill apparatus, and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Claims 5-6 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Majima (JP 2015009166 A) as applied to claims 1-2, further in view of Ibaraki (JP 3222139 U; IDS reference 05/31/2022). Ibaraki was cited previously by the Examiner.
Regarding claim 5, Majima teaches all the elements of the current invention as applied to claim 1. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1), but does not specify the design of the bead mill as claimed. Ibaraki, however, teaches a process of using a bead mill (Ibaraki, page 9, paragraph 0019) for preparing particles (Ibaraki, page 5, paragraph 0001) which can be of nanometer size (i.e., nano-particles; Ibaraki, page 6, paragraph 0007) and can be organic (Ibaraki, page 12, paragraph 0037). Ibaraki teaches a cylindrical part “1” (i.e., cylindrical vessel; Ibraki, page 13, paragraph 0038), which is vertical with an opening at the top (Ibaraki, page 14, figure 1) wherein the rotary shaft “9” (i.e., rotating shaft; Ibraki, abstract) is inserted (Ibraki, page 14, figure 1). Ibraki further teaches the rotary shaft “9” is connected to the stirring bars “4” (i.e., stirring rotors; Ibraki, abstract; figure 1).
Majima and Ibaraki are considered to be analogous to the claimed invention, because Majima, Ibaraki, and the instant invention are in the same field of preparing nanoparticles via bead milling. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a bead mill as designed by Ibraki, because Majima does not detail the design of the bead mill apparatus, and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Regarding claim 6, Majima and Ibaraki together teach all the elements of the current invention as applied to claim 5. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1), but does not specify the design of the bead mill as claimed. Ibaraki, however, teaches an upper tank “8” (i.e., slurry holder; Ibaraki, abstract), wherein a slurry channel “7” (i.e., connecting pipe; Ibaraki, abstract) connects the upper tank “8” to the cylindrical container “1” and wherein the rotary shaft “9” is inserted through the upper tank “8”, through the slurry channel “7” and into the cylindrical container “1” where it connects with the stirring bars “4” (Ibaraki, figure 1). Ibaraki further teaches the bead separator “5” and slurry outlet “6” (Ibaraki, page 9, paragraph 0019) in the bottom part of the cylindrical container “1” (Ibaraki, figure 1), where the slurry is discharged out of the container after passing through the bead separator (Ibaraki, page 9, paragraph 0019). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a bead mill as designed by Ibraki, because Majima does not detail the design of the bead mill apparatus, and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Regarding claim 14, Majima teaches all the elements of the current invention as applied to claim 2. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1), but does not specify the design of the bead mill as claimed. Ibaraki, however, teaches a process of using a bead mill (Ibaraki, page 9, paragraph 0019) for preparing particles (Ibaraki, page 5, paragraph 0001) which can be of nanometer size (i.e., nano-particles; Ibaraki, page 6, paragraph 0007) and can be organic (Ibaraki, page 12, paragraph 0037). Ibaraki teaches a cylindrical part “1” (i.e., cylindrical vessel; Ibraki, page 13, paragraph 0038), which is vertical with an opening at the top (Ibraki, page 14, figure 1) wherein the rotary shaft “9” (i.e., rotating shaft; Ibraki, abstract) is inserted (Ibraki, page 14, figure 1). Ibraki further teaches the rotary shaft “9” is connected to the stirring bars “4” (i.e., stirring rotors; Ibraki, abstract; figure 1). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a bead mill as designed by Ibraki, because Majima does not detail the design of the bead mill apparatus, and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Regarding claim 15, Majima and Ibaraki together teach all the elements of the current invention as applied to claim 14. As above, Majima teaches a rotor is provided in the grinding chamber (i.e., vessel) of the mill (Majima, claim 1), but does not specify the design of the bead mill as claimed. Ibaraki, however, teaches an upper tank “8” (i.e., slurry holder; Ibaraki, abstract), wherein a slurry channel “7” (i.e., connecting pipe; Ibaraki, abstract) connects the upper tank “8” to the cylindrical container “1” and wherein the rotary shaft “9” is inserted through the upper tank “8”, through the slurry channel “7” and into the cylindrical container “1” where it connects with the stirring bars “4” (Ibaraki, figure 1). Ibaraki further teaches the bead separator “5” and slurry outlet “6” (Ibaraki, page 9, paragraph 0019) in the bottom part of the cylindrical container “1” (Ibaraki, figure 1), where the slurry is discharged out of the container after passing through the bead separator (Ibaraki, page 9, paragraph 0019). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized a bead mill as designed by Ibraki, because Majima does not detail the design of the bead mill apparatus, and teaches the structure of the mill may be modified (Majima, page 8, 7th paragraph).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHASITY P JANOSKO whose telephone number is (703)756-5307. The examiner can normally be reached 7:30-3:30 ET.
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/C.P.J./Examiner, Art Unit 1613
/BRIAN-YONG S KWON/Supervisory Patent Examiner, Art Unit 1613
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