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 July 15, 2026 has been entered. Claims 1-9 are pending in the application. Claims 8 and 9 were previously withdrawn. Claim 10 was previously cancelled. Claim 1 was amended. Applicant’s amendments to Claim 1 have overcome the 112(b) rejection previously set forth in the Final Office Action mailed April 21, 2026.
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 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 was amended to recite “an amount of Si based on a total amount of Ti, Si, and the at least one metal species at surfaces of the colloidal particles derived from x-ray photoelectron spectroscopy is at equal to or less than 35% by mass”. While the instant Specification provides written support for a mass percent of Si relative to TiO2 [Table 1; ¶ 0072] and mass percent of Si as a ratio of “metal species at the colloidal particle surfaces” [Table 1; ¶ 0072], there is no explicit written support for “an amount of Si based on a total amount of Ti, Si, and the at least one metal species” which consequently raises doubt as to possession of the claimed invention at the time of filing.
Claims 2-7 are rejected for being dependent on a rejected base claim.
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 1-7 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.
Claim 1 recites “an amount of Si based on a total amount of Ti, Si, and the at least one metal species at surfaces of the colloidal particles”. However, it is unclear if the “at surfaces of the colloidal particles” refers to “an amount of Si”, to the “total amount of Ti, Si, and the at least one metal species”, or to the “at least one metal species”. For the purposes of examination, “an amount of Si” of Claim 1 will be interpreted to be calculated based on the total amount of Ti in the colloidal particles, the total amount of Si in the colloidal particles, and the total amount of at least one metal species at the surfaces of the colloidal particles. The interpretation of “the amount of Si” based on the amount of “metal species at the colloidal particle surfaces” is supported in the Specification as originally filed [Table 1; ¶ 0072].
Claims 2-7 are rejected for being dependent on a rejected base claim.
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.
Claims 1-7 are rejected are under 35 U.S.C. 103 as obvious over Nobuyuki et al. (JP2007/246351; as disclosed in the IDS submitted on 08/10/2022; English machine translation incorporated herewith; hereafter as “Nobuyuki”) as evidenced by ShinEtsu (KBM-403 (NPL), hereafter as “ShinEtsu”).
Regarding Claims 1 and 4, Nobuyuki teaches a titanium oxide organosol [Claims 1, 11; Examples 1-2, 4, 6, 8, 10], corresponding to a rutile-form titanium oxide organosol of Claim 1 consisting of:
titanium oxide sol particles that are coated with a layer consisting of a hydrous oxide of at least one metal species such as tin and zirconium [Claim 1] wherein the titanium oxide particles are rutile [Claim 2], corresponding to rutile-form titanium oxide particles that have been surface-treated with a hydrous oxide of at least one metal species selected from Zr, Ce, Sn, and Fe of Claim 1;
5.2 g of KBM-403, glycidoxypropyltrimethoxysilane (GOPS) [Paragraph 0023], which has a Si-content of 0.62 g (amt. of GOPS * MW of Si/MW of GOPS = 5.2*28.09/236.3 = 0.62 g);
t-butylamine [Paragraph 0018], which the instant Specification cites as a basic additive [Specification, Paragraph 0052], corresponding to a basic additive acting as a deflocculant of Claim 1, and wherein the basic additive is a water-soluble amine of Claim 4;
an organic, non-aqueous solvent [Claim 5; ¶ 0018-0019], corresponding to a water-insoluble solvent of Claim 1; and
a preparation of rutile titanium oxide hydrosol consisting of 40 g of TiO2 , 1.2 g of ZrO2 , 10 g of SnO2, 6 g SiO2 and 5.2 g of GOPS (which contains 0.62 g of Si ) [Example 1; Paragraph 0022-0023] which has a TiO2 content of 70 mass % of the oxides (40 g TiO2 / 57.2 g of total oxides), corresponding to TiO2 with respect to all oxides of Ti, Si and the at least one metal species in the entire colloidal particles is at least 64.5 mass % of Claim 1;
Si content of 3.42 g ((0.62 g Si from GOPS + 2.8 g Si from SiO2 = 3.42 g); and
A total amount of Ti, Si, surface metal species content of 32.8 g (Ti content = amt. of TiO2 *MW of Ti/MW of TiO2) = 40*48/80 = 24 g; Zr content = 1.2*91/123 = 0.89 g; Sn content = 10*118/150 = 7.9 g; Si content = 3.42g; 24+3.42+0.89+7.9= 36.21g);
Which is equivalent to 9.4 mass % of Si in the entire particle with respect to the total amount of metal species (3.42g of Si/36.21 g of total metal species = 9.4 mass %), which corresponds to an amount of Si at the particle surface to be equal to or less than 35% by mass of Claim 1.
ShinEtsu teaches said glycidoxypropyltrimethoxysilane (GOPS) [Page 1, Paragraph 1] is a silane coupling agent. Therefore, the glycidoxypropyltrimethoxysilane (GOPS) of Nobuyuki reads on the silane coupling agent comprising Si of Claim 1 as evidenced by ShinEtsu.
However, Nobuyuki is silent to an amount of the metal species at surfaces of the colloidal particles derived from x-ray photoelectron spectroscopy is 20 to 50 mass% of Claim 1 and wherein an amount of Si at surfaces of the colloidal particles is derived from x-ray photoelectron spectroscopy of Claim 1.
Nobuyuki teaches the same rutile-form titanium oxide organosol as required by the instant claim as set forth in the rejection above. Nevertheless, the titanium oxide sol and Si of Nobuyuki would expectedly result in the same amount of the metal species and silicon at surfaces of the colloidal particles as required by the instant Claim 1 if the titanium oxide sol of Nobuyuki were subject to the same x-ray photoelectron spectroscopy testing. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed titanium oxide sol, as the reference teaches each of the claimed ingredients (rutile-form titanium oxide particles, hydrous oxide silane coupling agent, basic additive and water-insoluble solvent) for the same utility (to obtain surface treated rutile-form titanium oxide particles) and for the same purpose (to obtain rutile-form titanium oxide organosol).
However, Nobuyuki does not explicitly teach all the limitations of Claim 1 in a single embodiment.
Nevertheless, Nobuyuki teaches rutile-form titanium oxide particles coated with a hydrous oxide of tin and zirconium [Claim 1], silane coupling agent [Paragraph 0023], basic additive [Paragraph 0018], water-insoluble solvent [Claim 5], and Ti and Si content [Paragraph 0022] with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claims 2, 3 and 7, Nobuyuki teaches:
amount of the metal hydrate oxide is suitably 5 to 100% by weight based on the total weight of the oxide [Paragraph 0015], corresponding to wherein a content ratio of the colloidal particles is at least 28 mass % when calculated as the oxide of Claim 2;
methods of suppressing the increase in viscosity of the titanium oxide hydrosol over time [Paragraph 0011];
11-20 haze value % measured with an optical path length of 10 mm [Table 1; Examples 1-6], corresponding to having a haze value of 20 % or less measured at an optical path length of 10 mm of Claim 3;
a transparent sol of titanium dioxide for forming a hard, transparent coating layer [Paragraph 0001], corresponding to a hard coating layer of Claim 7.
However, Nobuyuki is silent to a viscosity is 15 mPa s or less of Claim 2, being diluted with the water- insoluble solvent to a solid content of 5% by mass of Claim 3 and wherein the coating layer has a pencil hardness of at least 6H of Claim 7.
Nobuyuki teaches the same rutile-form titanium oxide organosol as required by the instant claim as set forth in the rejection above. Nevertheless, the titanium oxide sol of Nobuyuki would inherently result in the same viscosity range of Claim 2, haze value if tested in the same conditions in Claim 3, and coating layer hardness of Claim 7 as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed titanium oxide organosol, as the reference teaches each of the claimed ingredients (rutile-form titanium oxide particles, hydrous oxide silane coupling agent, basic additive and water-insoluble solvent) for the same utility (to obtain surface treated rutile-form titanium oxide particles) and for the same purpose (to obtain rutile-form titanium oxide organosol).
Regarding Claims 5 and 6, Nobuyuki further teaches: forming a hard, transparent coating layer comprised of titanium oxide sol having a high refractive index [Paragraph 0001], corresponding to the high refractive index coating-forming composition comprising the rutile-form titanium oxide organosol of Claim 5; and use of titanium oxide sol for optical parts and optical elements [Paragraph 0003], corresponding to an optical element comprising a coating layer formed from the high refractive index coating-forming composition of Claim 6.
Response to Arguments
Applicant's arguments in the Remarks and Affidavit filed 07/15/2026 have been fully considered but they are not persuasive.
Applicant argues that (1) Claim 1 concerns the surface composition of the colloidal particles, not the total Si amount distributed throughout the entire particle and therefore the calculation of amount of Si of Nobuyuki as disclosed in the Non-Final office action mailed 04/21/2026 was calculated incorrectly. However, due to the indefinite issues disclosed above (see Section Claim Rejections - 35 USC § 112(b)) there are a multitude of ways to interpret and therefore calculate the claimed amount of Si.
Nevertheless, even if the amount of Si of Nobuyuki is calculated as:
(amount of Si on the surface)/(amount of Ti in the entire particle + Si on the surface + at least on metal species in the entire particle) = (0.62 g of Si from GOPS on the surface + 3.42g from SiO2 on the surface)/(24g of Ti in the entire particle + 0.62 g of Si from GOPS on the surface + 3.42g from SiO2 on the surface + 0.89g of Zr on the surface + 7.9g of Sn on the surface) = 9.4 mass %, as disclosed above, which still reads on the claimed range of equal to or less than 35% by mass of Claim 1.
Other loose interpretations of “amount of Si based on a total amount of Ti, Si, and the at least one metal species at surfaces of the colloidal particles” of Claim 1 would still similarly read on the range of Claim 1. For example:
(amount of Si on the surface)/(amount of Ti on the surface + Si on the surface + at least on metal species on the surface) = (0.62 g of Si from GOPS on the surface + 3.42g from SiO2 on the surface)/(0g of Ti on the surface + 0.62 g of Si from GOPS on the surface + 3.42g from SiO2 + 0.89g of Zr on the surface + 7.9g of Sn on the surface) = 31 mass %, which still reads on the claimed range of equal to or less than 35% by mass of Claim 1.
Thus, applicant’s argument is not persuasive.
Given the discrepancies in the different ways to interpret and calculate the “amount of Si” of Claim 1, Applicants are invited to request an interview with the Examiner to better clarify the intended claim language. Information regarding requesting the interview is provided below.
Applicant argues (2) organosols in excess of the claimed 35% by mass, the resulting organosol exhibited poor dispersibility. However, the data has been considered but not found to be convincing or commiserate in scope with the claims. As outlined in the disclosure above, Nobuyuki teaches a calculated 9.4 mass % Si [Paragraph 0023], which is within the claimed range, and thus, would expectedly form the same organosol as the claimed invention. The Examiner’s calculated amount of 9.4 mass % of Si is notably different from the values calculated in the Page 9 of applicant’s Remarks, and from the 39 mass % measured in applicant’s experiments and disclosed in Page 3 of the Affidavit. It is unclear how applicants calculated the values disclosed in Page 9 of applicant’s Remarks and Affidavit.
The calculations outlined above are different in several respects, notably:
The amount of Si that is referred to in Lines 12-13 of Claim 1 is calculated based on the amount Si, not SiO2 since Lines 12-13 refer to Si and not SiO2 or the oxide of Si (as how it is referred to in Lines 8-9 of Claim 1).
The amount of Si (not SiO2) in Nobuyuki was calculated based on the amount of Si in KBM-403 in Lines 360-361 (5.3 g of GOPS, which has 0.62 g of Si), as added in the form of SiO2 in Lines 364-365 (2 g of SiO2, which has 0.93 g of Si), and as added in the form of SiO2 in Lines 373-374 (2 g of SiO2, not 4 g of SiO2 as noted on Page 9 of the Remarks, which has 0.93 g of Si). In sum, where the calculations on Page 9 of the Remarks note 8 g of SiO2, Examiner notes 6 g of SiO2, and where the Remarks use the mass of SiO2, Examiner uses the mass of Si.
The total amount of metal species at surfaces of the colloidal particles that is referred to in Lines 12-13 of Claim 1 is calculated based on the amount of metal in the metal oxides, not the amount of metal oxides. This is notably different from the applicant’s use of the total amount of metal oxide in their calculations. Since Lines 7-9 of Claim 1 specifically refer to “all oxides of the group consisting of Ti, Si and the at least one metal species” (emphasis added) and which is notably different from Lines 12-13 which specifically refer to “a total amount of metal species”, Claim 1 Lines 7-9 were interpreted to refer to metal oxides whereas Claim 1 Lines 12-13 were interpreted to refer to metals. Thus, the total amount of metal species, not the amount of metal hydroxides, were used in the examiner’s calculations (i.e., the mass of the O2 subtracted from the mass of the metal oxides).
It is also unclear what the 13.5 in the calculations of Page 9 of the Remarks is referring to.
Furthermore, the amount of Si in the Comparative Examples 1-5 (8, 30, 0, 9, and 11 mass % of Si) overlap with the claimed range of equal to or less than 35 % by mass of Claim 1. Even though these Comparative Examples have Si amounts within the claimed range, they none the less have purportedly undesirable properties. This is contrary to the Applicant’s argument that the claimed range imparts desirable results.
In addition, it is unclear how the calculated Si mass % of Table 1 relates to the claimed amount since the Si mass % of Table 1 is calculated as a ratio of metal species at colloidal particle surface. Even if the Applicant argues that Ti was included in the calculation of the amount of metal species at the colloidal particle surface, Si is not a metal so it must not have been included in the data disclosed in Table 1 of the original Specification. For this reason and the others disclosed above, the data has been considered but not found to be convincing.
It is for at least these reasons that the applicant’s arguments are not persuasive.
Applicant argues (3) that the materials as a Si source are different between Nobuyuki and the Applicant’s method. However, while Nobuyuki teaches multiple sources of Si, only one of while corresponds to a claimed limitation, the organosol of Nobuyuki nevertheless reads on the instantly claimed invention. The prior art is not required to only teach the claimed limitations, the prior art, alone or in combination, is only required to teach all the claimed limitations in order to render the claimed invention anticipated or obvious. Thus, applicant’s argument is not persuasive.
Applicant argues (4) that the organosol of Nobuyuki has a large amount of hydrophilic SiO2, whereas the present invention reduces the proportion of Si present on the surfaces of the colloidal particles, thereby imparting hydrophobicity to the colloidal particles. However, as disclosed above, the organol of Nobuyuki nevertheless teaches an amount of Si (9.4 mass %) that reads on the claimed amount of 35 mass %, rendering the claimed invention obvious. Since the organol of Nobuyuki teaches the claimed range, the organosol would still expectedly have similarly hydrophobic qualities. Furthermore, the Nobuyuki is not required to teach this hydrophobic trait as it is not a claimed limitation. Thus, applicant’s argument is not persuasive.
Applicant argues (5) that ShinEtsu does not cure the deficiency in Nobuyuki. However, ShinEtsu is not relied on to modify the titanium oxide organosol of Nobuyuki, but rather to teach that the GOPS of Nobuyuki reads on the silane coupling agent of Claim 1. Thus, applicant’s argument is not persuasive.
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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
