DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 10/09/2025.
3. Claims 1-4, 6-13 are pending. Claims 1-4, 6-8 are under examination on the merits. Claim 5 is previously cancelled. Claims 9-13 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 10/09/2025 have been fully considered but they are not persuasive, thus claims 1-4, 6-8 stand rejected as set forth in Office action dated 07/16/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (JP 2019-109507 A, machine translation, hereinafter “’507”) in view of Akimoto et al. (US Pub. No. 2013/0337161 A1, hereinafter “’161”).
Regarding claims 1-4: ‘507 teaches a composition (Page 7/39, [0001]), comprising: at least one selected from silica particles (Page 11/39, [0011; Page 13/39, [0018]) in a shape in which a plurality of spherical silicas are connected in a bead shape (Page 13/38, [0018]-[0019], Fig. 1) or silica particles in a shape in which a plurality of spherical silicas are connected in a plane (Page 13/39, [0019]), a surfactant (Page 23/39, [0050]), and a solvent (Page 19/39, [0035]), a content of the silica particles in a total solid content of the composition is 95 mass% or more (Page 13/39, [0023]), the surfactant comprises a silicone-based surfactant (Page 23/39, [0050]), and, and the solvent is selected from an organic solvent (Page 18/39, [0035]), wherein the solvent includes an alcohol-based solvent (Pages 26-27/39, [0067]; Page 28/39,[0068]). ‘507 teaches the optical functional layer is preferably subjected to a surface adhesion treatment, so as to have a hydrophobic surface such as HMDS (hexamethylene disilazane, hexamethyl disilazane) is used for this treatment. It is believed that when HMDS is applied to a layer containing, for example, SiO2, it reacts with Si-OH bonds present on its surfaces to form Si-O-Si (CH3)3. Thereby, the film surface can be made hydrophobic (Page 34/39, [0083]). ’507 does not expressly teach at least a part of hydroxy groups on a surface of the silica particles is treated with a hydrophobizing treatment agent which reacts with the hydroxy group, wherein the hydrophobizing treatment agent is an organosilicon compound or an organosilane compound, and wherein the hydrophobizing treatment agent is at least one selected from an alkylsilane compound, an alkoxysilane compound, a halogenated silane compound, an aminosilane compound, or a silazane compound, and a contact angle of a film, which is formed of the silica particles and has a thickness of 0.4 µm, with water at 25°C is 20° to 90°.
However, ‘161 teaches an organic-inorganic composite film containing an organic-inorganic composite including an inorganic compound particle and a polymer bonded to the inorganic compound particles (Page 1, [0001]). ‘161 teaches an inorganic oxide particle having a chain structure in which a plurality of primary particles are linked in a beaded shape (hereinafter referred to as a "beaded inorganic oxide particle") is not limited, but the particles have a shape in which the particles are linked and/or branched in a beaded shape. Specific examples thereof may include an inorganic oxide particle having a chain structure in which spherical colloidal silica are linked in a beaded shape, and an inorganic oxide particle in which linked colloidal silica is branched (hereinafter referred to as "beaded silica"), as shown in FIG. 3 (Page 4, [0096]. ‘161 teaches surface-reformed inorganic particles in which the coupling agent has been introduced into the surface of the inorganic oxide particles may be obtained by a reaction of the inorganic oxide particles and the coupling agent (Page 10, [0168]-[0169]). A hydrophobizing agent may be added after the reaction with the coupling agent or together with the coupling agent, and thereby the reaction is performed (Page 10, [0169]). The kind of hydrophobizing agent is not particularly limited as long as the hydrophobizing agent reacts to a remaining hydroxyl group of the inorganic particle surface such as silane compounds (Page 10, [0169]) with benefit of providing hydrophobicity as desired as well as improved dispersibility of the particles in organic solvent by ‘161 (Page 11, [0174]).
In an analogous art of the surface-treatment of silica-based particles composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the surface of silica particles by ‘507, so as to include at least a part of hydroxy groups on a surface of the silica particles is treated with a hydrophobizing treatment agent which reacts with the hydroxy group, wherein the hydrophobizing treatment agent is an organosilicon compound or an organosilane compound, and wherein the hydrophobizing treatment agent is at least one selected from an alkylsilane compound as taught by ‘161, and would have been motivated to do so with reasonable expectation that this would result in providing hydrophobicity as desired as well as improved dispersibility of the particles in organic solvent as suggested by ‘161 (Page 11, [0174]).
It is submitted that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. 5 Appeal2017-008153 Application 14/465,917 Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.
Pertaining specifically to claim 1, since ‘507 in view ‘161 discloses the identical or substantially identical composition as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e., a contact angle, would be expected to be the same as claimed (i.e., a contact angle of a film, which is formed of the silica particles and has a thickness of 0.4 µm, with water at 25°C is 20° to 90°). If there is any difference between the product of ‘507 in view of ‘161 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claims 6-8: ‘507 teaches the composition (Page 7/39, [0001]), wherein the composition is a composition for forming a member adjacent to a colored layer of a color filter which has the colored layer or wherein the composition is a composition for forming a partition wall, wherein the composition is a composition for forming a partition wall of a structural body which has a support, the partition wall provided on the support, and a colored layer provided in a region partitioned by the partition wall (Page 34/39, [0085]-[0088]).
It is submitted that claims 6-8 are merely intended uses of the composition and therefore are not given patentable weight. Furthermore, the composition as set forth above in modified ‘507 overlaps the composition of the present application in terms of the type and amount of ingredients and therefore these overlapping embodiments of modified ‘507 are inherently capable of being used in the same way (i.e., as in claims 6-8) as the overlapped embodiments of the present disclosure.
Response to Arguments
8. Applicant's arguments filed 10/09/2025 have been fully considered but they are not persuasive,
The Applicant's argument regarding the rejection of Kato ‘806 is rendered moot since the claims rejection under ‘802 is deemed withdrawn.
In response to the Applicant’s argument that ‘507 in view of ‘161 fail to disclose or suggest the feature of “a contact angle of a film, which is formed of the silica particles and has a thickness of 0.4 µm, with water at 25°C is 20° to 90°” recited in the amended claim 1.
The examiner respectfully disagrees. It is submitted since ‘507 in view of ‘161 discloses the identical or substantially identical composition comprising silica particles, a surfactant, and a solvent with overlapping ranges as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e., a contact angle, would be expected to be the same as claimed (i.e., a contact angle of a film, which is formed of the silica particles and has a thickness of 0.4 µm, with water at 25°C is 20° to 90°). If there is any difference between the product of ‘507 in view of ‘161 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCPA 197 5).
‘161 teaches the beaded SiO2-g-pGMA+Celoxide; Photo-Cationic Curing in Example 11, that a crosslinker ("Celoxide 2021P") and a photo-acid generating agent are introduced into the organic-inorganic composite J of Example 10 according to the mix proportion of Table 5, and a solvent (mixed at a volume ratio of MEK:cyclohexanone=8:2) is added so that a solid content concentration was 10 mass % to obtain a coating material (Page 33. [0751]).
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‘161teaches an organic-inorganic composite film is fabricated according to the same method as in Example 6 and evaluated. Evaluation results are shown in Table 9, whereby the water contact angle of the film is decreased from 111° in Example 10 to 92° in Example 11.
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Thus, 161’ disclosure would have indicated to one of ordinary skill in the art before the effective filing date of the claimed invention that the type and amount of the crosslinker, photo-acid generating agent (variables) in each photo-cationic curing composition determine (affect) the water contact angle (property) of the composition, establishing that the type and amount of
crosslinker, photo-acid generating agent in curing composition are result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."), and the water contact angle is recognized as a result-effective variable before determining that optimum ranges of said variable might be characterized as routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
9. 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 extension fee 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 date of this final action.
Examiner Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
10/17/2025
bijan.ahvazi@uspto.gov