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 11/07/2025 has been entered. Claims 1 and 2 are under examination. Claims 3-5 are pending but withdrawn from consideration. Applicant’s amendments to claim 1 is supported in at least [0050]-[0066] of the instant specification.
Response to Arguments
Applicant’s arguments, see Pg. 5-6 filed 07/14/2025 with respect to claim 1, have been fully considered however are solely directed to a claim limitation “the solution has a pH of 11 or more” introduced in the amendment filed 11/07/2025, which postdates the rejection mailed 09/23/2025.
Upon further search and consideration and as necessitated by the amendment, the 35 U.S.C. 103 rejection of 09/23/2025 is withdrawn and a new grounds of rejection is made under 35 U.S.C. 103 as being unpatentable over Korzhinskaya et al. (Vestnik Otdelenia Nauk o Zemle, 2012, 4) in view of Ferris et al. (J. Chem. Eng. Data. 1966, 11, 343-346) and Moriya et al. (JP2011190115A English).
Claim Interpretation
The term “niobic acid aqueous solution” is interpreted to be a solution comprising water and a niobium species that was derived from Nb2O5 at some point. This interpretation includes examples such as hydrated niobia (Nb2O5•n H2O), aqueous solutions of hydrolyzed NbCl5, and Nb2O5 aqueous solutions that were dissolved with the aid of HF, among other examples, in which Nb2O5 was present at some point in the dissolution process. This interpretation is support in the instant specification in at least [0020] and [0050]
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Korzhinskaya et al. (Vestnik Otdelenia Nauk o Zemle, 2012, 4) in view of Ferris et al. (J. Chem. Eng. Data. 1966, 11, 343-346) and Moriya et al. (JP2011190115A English).
Regarding claim 1, Korzhinskaya teaches a niobium oxide acidic aqueous solution where the Nb2O5 concentration is n*10^-0.5 m (i.e. molality) in aqueous solutions comprising HF (hydrofluoric acid) (Abstract; Fig. 1; Pg. 2, par. 5). Converting the molality values of 10^-0.5 m to molarity (i.e. M, mol/L) affords Nb2O5 concentrations of 0.32 mol/L (calculations below). When converting the range of 1.0 to 40 mass% of instant claim 1 to units of molarity (in aqueous solution), claim 1 requires the Nb2O5 concentration to be between 0.038 to 2.51 mol/L (calculations below).
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 Korzhinskaya (0.32 mol/L) overlaps with the claimed range (1 to 40 mass% (i.e. 0.038 to 2.51 mol/L). Therefore, the range in Korzhinskaya renders obvious the claimed range.
Korzhinskaya further teaches the Nb2O5 acidic aqueous compositions are solutions, in that the contents of the composition are dissolved (Pg. 2, par. 4-7). Korzhinskaya further teaches the solutions can be further treated to deposit the niobium oxide, either by neutralizing the solution, decreasing the fluorine concentration, or by increasing the oxygen fugacity (Pg. 3, par. 1). The discussion of a means to precipitate the Nb2O5 from solution further supports the conclusion of the state of the Nb2O5 aqueous mixtures as solutions in Korzhinskaya.
While Korzhinskaya is silent regarding explicitly mentioning “no particles of 1.0 nm or more are detected in the particle size distribution measurement using dynamic light scattering,” Korzhinskaya teaches a solution that comprises niobic acid and an acid such that a skilled artisan viewing Korzhinskaya would regard the contents as dissolved. A skilled artisan would interpret this description of the solution to include no suspended particles and be considered to include fully dissolved components, meeting the limitation of particle size detected by dynamic light scattering. Korzhinskaya teaching that the solutions require further treatment to precipitate niobia further support the dissolved state of the contents.
This interpretation of a solution meeting the limitation of particle size detected by dynamic light scattering is further supported from interpretation of the instant invention, where in at least [0023] of the instant specification, a solution in a completely dissolved state is described as being expected to contain no particles of 1.0 nm or more. Additionally, the solution of Korzhinskaya is not described as a sol or dispersion, further supporting the fully dissolved state of the components in the aqueous solution.
Calculations:
10^(-0.5) = 0.316, therefore a molality of 10^(-0.5) = 0.316
Molality (m) = moles of solute per kilogram of solvent
Molarity (M) = moles of solute per liter of solution
In aqueous solution, 1 kg of water = 1 liter of water
Therefore, 0.316 m (Nb2O5 in water) = approximately 0.316 M (Nb2O5 in water).
Mass% to molarity:
Nb2O5 molar mass = 265.81 g/mol
1 g Nb2O5 per 99 g water = 1 1g / 265.81 g/mol = 0.0038 mol per 0.099 L water =
0.038 M for 1.0 mass% Nb2O5 solution
For 40 mass%, take 40 g of Nb2O5 and 60 g of water.
The claim further requires “an amount of free fluorine in the solution is 100 mg/L or less” to which Korzhinskaya does not explicitly state the free fluorine concentration, despite teaching the HF and KF solution concentrations (0.01 m; see Pg. 2, par. 4-6).
Ferris teaches a niobic oxide solution prepared with the aid of hydrofluoric acid that displays a free fluoride concentration in the saturated solution of less than 0.003 M (Table 1; Abstract). A concentration of less than 0.003 M is equivalent to a concentration of less than 60 mg/L (see calculations below) and 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 Ferris (less than 60 mg/L) overlaps with the claimed range (less than 100 mg/L). Therefore, the range in Ferris renders obvious the claimed range.
Calculations:
HF molar mass = 20 g/mol
0.003 M (mol/L) * 20 g/mol = 0.06 g/L *1000 = 60 mg/L
Advantageously, when the free fluoride concentration is kept low (i.e. less than 60 mg/L), saturated solutions of niobic acid with high Nb2O5 concentration can be obtained (Table 1; Pg. 345-346, Discussion).
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 a free fluoride concentration of less than 60 mg/L in the solution of Korzhinskaya in order to enable saturated niobic acid solutions with high Nb2O5 concentrations to be obtained, as taught by Ferris.
The claim further requires “the solution has a pH of 11 or more” to which Korzhinskaya and Ferris are silent.
Moriya teaches the preparation of a niobium solution prepared from niobium pentoxide (Nb2O5) dissolved in HF that is then added ammonia solution to obtain a solution with a pH of 8.0 or higher (Abstract; Pg. 3, par. 5). 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 Moriya (pH 8.0 or higher) overlaps with the claimed range (pH 11). Therefore, the range in Moriya renders obvious the claimed range.
Advantageously, maintaining a pH of 8.0 or higher allows for suitable concentrations of Nb2O5 to be dissolved such that the solutions are economical for production (Pg. 3, par. 5).
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 produce a solution with a pH of 8.0 or higher in the solution of Korzhinskaya in order to obtain suitable concentrations for economical production, as taught by Moriya.
Regarding claim 2, Korzhinskaya in view of Ferris and Moriya teaches the niobic acid aqueous solution of claim 1 and the claim further requires a “component derived from at least one selected from amines and ammonia,” to which Korzhinskaya and Ferris are silent.
Moriya teaches the preparation of a niobium solution prepared from niobium pentoxide (Nb2O5) dissolved in HF that is then added ammonia (Abstract; Pg. 3, par. 5; Pg. 2, par. 9-10).
Advantageously, adding ammonia to niobia acid derived solutions results in ammonia interacting with niobia in solution that in turn provides films produced from these solutions with excellent stability, durability, refractive index, and transparency (Pg. 2, par. 8-11).
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 include ammonia in the aqueous solution of Korzhinskaya in order to provide a solution that produces films with excellent stability, durability, refractive index, and transparency, as taught by Moriya.
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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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