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 .
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a fine particle production method using a thermal plasma flame created by a plasma torch, does not reasonably provide enablement for general fine particle production as encompassed by the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 23-32 encompasses fine particle production using feedstock by means of a gap-phase process. The specification discloses sufficient information for one of ordinary skill in the art to produce fine particles using a thermal plasma flame created by a plasma torch, Para [0014]. However, the specification does not provide direction on how to produce fine particles by any generic “gas-phase” process. At the time of filing, the state of the art was such that one of ordinary skill would not be able to produce the powder as claimed by a method other than the specific process involving a thermal plasma flame created by a plasma torch mentioned in the specification. The breadth of claim 23 is such that it encompasses any undefined and unspecified gas-phase process to produce fine particles by transforming the feedstock into a mixture in a gas phase state and cooling the gas phase state using a quenching gas containing an inert gas, with the fine particles being surface treated in a temperature region in which the surface treating agent is not denatured, where the surface treating agent is sprayed onto the fine particles in droplet form. This claim would encompass production methods not involving a thermal plasma flame created by a plasma torch. While claim 24 states that the process is a thermal plasma process or a flame process, this does not require that the fine particles be produced using a thermal plasma flame created by a plasma torch. Therefore, this claim would encompass methods other than those enabled in the specification.
At the time of filing, the state of the art was such that one of ordinary skill could not readily predict the effect of a change within the subject matter to which the claimed invention pertains. See MPEP 2164.03. For example, the specification does not explain what elements, metals, materials or amounts of which would be an acceptable feedstock. While the specification mentions that the feedstock can be copper powder, it is not clear if any material would work for the feedstock or if changing the feedstock material(s) would affect the final product. The specification also does not explain what elements, metals, materials or amount of which would be acceptable for the other components of the mixture in which the feedstock is placed. It is not clear what effects that different mixture component would have on the final product. It is not clear if changing these material(s) would affect the final product.
The amount of direction provided by the inventor is not sufficient for one of ordinary skill in the art to be able to carry out the gas-phase process. The term gas-phase process could encompass many different processes. It would include any process involving chemical reactions, material synthesis, or phase changes occurring in a gaseous environment. As claimed, it is not clear what additional parameters the process must be conducted under, or what additional steps would be necessary to obtain the product. While the specification provides additional details for one working example, the process involving a thermal flame created by a plasma torch, additional details are not listed for other gas-phase processes encompassed by the claims.
Claims 25-32 all depend on claims 23 or 24. While they list additional limitations, they do not narrow the claims sufficiently enough to be enabled by the specification .
Thus, the disclosed method for producing fine particles using a thermal plasma flame created by a plasma torch does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 23-32.
Claim Rejections - 35 USC § 112(b)
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 25 and 26 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 25 and 25 both recite “amine value alone” and “acid value alone”. It is not clear what the term “value” means when applied to amine and acid. It is not clear whether this would include any component containing an amine/acid or only components that have a specific concentration or range of concentrations of amines/acids.
It is also unclear what the term “alone” is referring to. If it is referring to value specifically, this would suggest that only 1 amine/acid value would be covered by the claim. If it is referring to “amine/acid value” as a whole phrase, this would suggest that many amine/acid values would be covered by the claim. The specification does not provide an explanation of the scope of the claim.
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 (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 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 23-26 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over US2015291439 of Kinoshita further in view of US20150352210 of Wang.
Claim 23 mentions a fine particle production method for producing fine particles using feedstock by means of a gas phase process. Kinoshita discloses a method for producing fine particles by introducing a feedstock (e.g. a copper compound) into a gas phase process such as a thermal plasma, Para.[0036-0044]. Claim 23 also mentions transforming the feedstock into a mixture and cooling the mixture using a quenching gas containing an inert gas. Kinoshita indicates that the thermal plasma flame has a higher temperature than the boiling point of the copper compound feedstock so the copper compound is easily converted into a gas phase state, Para.[0044]. Kinoshita also teaches cooling using a quenching gas containing an inert gas, Para.[0060]. Kinoshita further discloses dispersing those particles in an organic solvent, Para.[0123], which would result in “supplying a surface treating agent to the fine particle bodies”. This step of Kinoshita would only be workable if conducted “in a temperature region in which the surface treating agent is not denatured” , as mentioned in claim 23 of the instant application. Claim 23 also mentions a step of spraying the surface agent onto the fine particle bodies in droplet form and a step of collecting the fine particles in a temperature region in which the surface treating agent is not denatured. Kinoshita does not teach transforming the surface agent into droplets and spraying the particles. Wang teaches an invention related to particle functionalization, in the same field of endeavor as the claimed invention. Wang teaches that particles can be functionalized as they are generated, which can eliminate adverse interaction between the particles and air. For example, as particles are traveling, a coating material can be sprayed to form a mist or aerosol, and the particles can react with the molecules of the coating material as they pass through, Para.[0037]. Wang also discloses that the particles can be collected after being surface modified, Para.[0082]. Therefore, it would be obvious to one of ordinary skill in the art to use the gas-phase process, occurring in a temperature range where the surface agent is not denatured, that is disclosed in Kinoshita with the spraying method of applying the surface treating agent and collection of particles taught by Wang in order to obtain the properly functionalized powder and to eliminate adverse interactions between the particles and air. Claims 24-32 are also rejected as they depend on claim 23 and do not solve the above issues.
Claim 24 further limits claim 23 by stating that the gas-phase process is a thermal process or a flame process. Kinoshita discloses a thermal plasma process involving a flame from a plasma torch, Para.[0036-0044]. Therefore, Kinoshita in view of wang reads on all limitations of claim 24. Claims 26, 28, 30 and 32 are also rejected as they depend on claim 24 and do not solve the above issues.
Claims 25 and 26 further limit claims 23 and 24 respectively, by restricting the surface treating agent to include specific components. It is not clear what is meant by amine value alone and acid value alone, see 112(b) above. For the purposes of applying prior art this will be interpreted as encompassing any organic acid or organic solvent as the surface treating agent. Kinoshita discloses a dispersion containing cuprous oxide fine particles of the invention dispersed in an organic solvent, Para[0123]. Thus, Kinoshita in view of Wang reads on all limitations of claims 25 and 26.
Claims 29 and 30 further limit claims 23 and 24 respectively, by stating the feedstock is dispensed in particulate form. Kinoshita indicates the feedstock can be supplied into the plasma by dispersing it into a state of primary particles, Para.[0048] considered equivalent to “the feedstock being dispersed in particulate form” in the instant application. Therefore, Kinoshita in view of Wang reads on all limitations of claims 29 and 30.
Claims 31 and 32 further limit claims 23 and 24 respectively, by stating that the feedstock is dispersed in liquid to obtain a slurry, and the slurry is transformed into droplets and supplied into the thermal plasma flame. Kinoshita discloses an embodiment where the feedstock is dispersed in liquid to obtain a slurry which is transformed into droplets and supplied into the plasma, Para.[0052-0054]. Therefore, Kinoshita in view of Wang reads on all limitations of claims 31 and 32.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over US2015291439 of Kinoshita in view of US20150352210 of Wang further in view of US20070221635 of Boulos.
Claims 27 and 28 further limit claims 23 and 24 by requiring the feedstock to be a copper powder. While Kinoshita employs a copper compound feedstock such as copper oxide, Kinoshita does not specify that it must be a copper powder. Boulos teaches the production of nanoscale powders using plasma in the same field of endeavor as the instant invention. Boulos indicates the known equivalence in the art of producing copper powder and copper oxide powder via such a method, Para.[0028]. Therefore, it would be obvious to one of ordinary skill in the art to modify the method of Kinoshita in view of Wang by using a copper powder feedstock as claimed.
Response to Arguments
In remarks filed April October 29, 2025, Applicant states that Kinoshita in view of Watanabe fails to disclose supplying the surface agent by the method recited in present claim 23 as amended. In response, the examiner believes that the newly applied Wang reference above speaks directly to the claimed method of supplying the treating agent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733
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