DETAILED ACTION
Claim(s) 12-17 were rejected in the Office Action mailed 12/09/2025.
Applicants filed a Request for Continued Examination, and amended claim(s) 12, and added claim(s) 21-22 on 03/06/2025.
Claim(s) 1-22 are pending, and claim(s) 1-11 and 18-20 are withdrawn.
Claim(s) 12-17 and 21-22 are rejected.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/06/2026 has been entered.
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 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., US 2015/0010748 A1 (Chen) (provided in IDS received on 10/17/2022) in view of Shinohara et al., The role of citric acid in the stabilization of nanoparticles and colloidal particles in the environment: measurement of surface forces between hafnium oxide surfaces in the presence of citric acid, Langmuir, 2018 (Shinohara).
Regarding claim 12, Chen discloses basic coating composition including inorganic oxide nanoparticles and an organic base (Chen, Abstract); the inorganic oxide nanoparticles can include metal oxide nanoparticles (Chen, [0054]); preferred bases include amidines, guanidines, and combinations thereof (reading upon an organic base having an amidine skeleton or a guanidine skeleton) (Chen, [0028]).
the inorganic oxide nanoparticles can include metal oxide nanoparticles, including indium oxide (Chen, [0054]).
Further regarding claim 12, Chen further teaches certain embodiments of a coating composition include water; certain embodiments of a coating composition are aqueous dispersion having a pH of greater than 8 (Chen, [0018]). Chen does not explicitly disclose a carboxylate present on a surface of the inorganic oxide nanoparticles.
With respect to the difference, Shinohara teaches interactions of nanoparticles and their stability in solution (Shinohara, Abstract). Shinohara specifically teaches adsorption of citric acid on metal oxide particles (Shinohara, page 2603, Conclusion).
As Shinohara expressly teaches, low molecular weight carboxylic acids are commonly used as particle interaction modifiers as they adsorb readily to metal oxide−aqueous and metal−aqueous interfaces (Shinohara, page 2595, left column, 2nd paragraph); upon adsorption, the citric acid layer shifts the surface potential of the metal oxide to more negative values such that the surface potential becomes significantly negative at all pH values of 3 and above in the presence of citric acid. The substantial magnitude of the surface potential gives rise to a significant electrostatic repulsion between particles, which prevents aggregation. The surface force measurements confirm that citric acid is a very effective stabilizer for metal oxide particles as the surface forces were always repulsive and no primary adhesion was observed, even at low citric acid concentrations (Shinohara, page 2603, Conclusion).
Shinohara is analogous art as Shinohara is drawn to interactions of nanoparticles and their stability in solution.
In light of the motivation of using low molecular weight carboxylic acid, such as citric acid as particle interaction modifier through adsorption on metal oxide particle surface, as taught by Shinohara, it therefore would have been obvious to a person of ordinary skill in the art apply a low molecular weight carboxylic acid, such as citric acid, as a particle interaction modifier to the inorganic oxide nanoparticles of Chen, in order to prevent particle aggregation, and thereby arrive at the claimed invention.
Regarding claims 13-16, as applied to claim 12, Chen in view of Shinohara further teaches 0.1 wt-% to 20 wt-% of an organic base, based on the total weight of the dry inorganic oxide nanoparticles (Chen, [0004]);
representative examples of useful amidine compounds include DBU (that is, 1,8-diazabicyclo[5.4.0]-7-undecene) (i.e., diazabicycloundecene), DBN (that is, 1,5-diazabicyclo[4.3.0]-5-nonene) (i.e., diazabicyclononene) (Chen, [0032]);
the inorganic oxide nanoparticles can include metal oxide nanoparticles, including indium oxide (Chen, [0054]);
Given that Chen in view of Shinohara teaches the basic coating composition that overlaps the presently claimed metal oxide nanoparticle dispersion liquid, including DBU (that is, 1,8-diazabicyclo[5.4.0]-7-undecene), DBN (that is, 1,5-diazabicyclo[4.3.0]-5-nonene) as the organic base and indium oxide as the metal oxide, it therefore would be obvious to one of ordinary skill in the art, to use the basic coating composition, which is both disclosed by Chen and encompassed within the scope of the present claims and thereby arrive at the claimed inventions.
When diazabicycloundecene (with molecular weight of 152.24 g/mol) is used as the organic base and indium oxide (In2O3, with molecular weight of 277.64 g/mol) is used as the inorganic oxide nanoparticle, it can be derived that 0.1 wt-% to 20 wt-% of an organic base, based on the total weight of the dry inorganic oxide nanoparticles corresponds to a molar ratio of a content of the organic base to a content of a metal component of the inorganic oxide nanoparticle of: 0.0009 to 0.18. (i.e., 0.1/100/152.24/(1/277.64*2)=0.0009; 20/100/152.24/(1/277.64*2)=0.18), which encompasses the range of the presently claimed.
Regarding claim 17, as applied to claim 12, Chen in view of Shinohara further discloses suitable inorganic oxide nanoparticles have an average primary particle size of 40 nanometers (nm) or less; in certain embodiments, the inorganic oxide nanoparticles have an average primary particle size of 10 nm or less (Chen, [0047]); list of materials in [0169] discloses VK-L10B of gamma alumina nanoparticles of 10 nm (Chen, [0169]).
Claims 12-15, 17 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., US 2015/0010748 A1 (Chen) (provided in IDS received on 10/17/2022) in view of Faure et al., Dispersion and surface functionalization of oxide nanoparticles for transparent photocatalytic and UV-protecting coatings and sunscreens, Science and Technology of Advanced Materials, 2013 (Faure).
Regarding claims 12 and 21-22, Chen teaches basic coating composition including inorganic oxide nanoparticles and an organic base (Chen, Abstract); the inorganic oxide nanoparticles can include metal oxide nanoparticles (Chen, [0054]); preferred bases include amidines, guanidines, and combinations thereof (reading upon an organic base having an amidine skeleton or a guanidine skeleton) (Chen, [0028]);
the inorganic oxide nanoparticles can include metal oxide nanoparticles, including titanium oxide (Chen, [0054]);
the coating composition can include an organic solvent, or combination of water and an organic solvent (Chen, [0019]).
Further regarding claims 12 and 21-22, Chen does not explicitly disclose a carboxylate present on a surface of the inorganic oxide nanoparticles; or wherein the carboxylate is R1COO-, wherein Rl is a hydrogen atom, a methyl group, an ethyl group, a 1- propyl group, or a 2-propyl group; or wherein the carboxylate is acetate.
With respect to the difference, Faure teaches dispersion and surface functionalization of metal nanoparticles for example for coatings (Faure, Abstract, Introduction). Faure specifically teaches adsorption of additives on hydroxylated metal oxide surfaces in non-aqueous systems, in water-alcohol mixtures, acetate groups can be used as dispersants (Faure, page 10, right column, 3rd paragraph).
As Faure expressly teaches, these dispersants prevent aggregation of TiO2 nanoparticles for example (Faure, page 10, right column, 3rd paragraph).
Faure is analogous art as Faure is drawn to dispersion and surface functionalization of metal nanoparticles for example for coatings.
In light of the motivation of using acetate group containing additives for metal oxide containing composition, as taught by Faure, it therefore would have been obvious to a person of ordinary skill in the art to include an acetate containing additives for the coating composition including inorganic oxide, such as titanium oxide, so that the acetate group can adsorb on the surface of titanium oxide surface, and prevent aggregation of TiO2 particles, and therefor arrive at the claimed inventions.
Regarding claims 13-15, as applied to claim 12, Chen in view of Faure further teaches 0.1 wt-% to 20 wt-% of an organic base, based on the total weight of the dry inorganic oxide nanoparticles (Chen, [0004]);
representative examples of useful amidine compounds include DBU (that is, 1,8-diazabicyclo[5.4.0]-7-undecene) (i.e., diazabicycloundecene), DBN (that is, 1,5-diazabicyclo[4.3.0]-5-nonene) (i.e., diazabicyclononene) (Chen, [0032]);
the inorganic oxide nanoparticles can include metal oxide nanoparticles, including titanium oxide (Chen, [0054]);
Given that Chen in view of Faure teaches the basic coating composition that overlaps the presently claimed metal oxide nanoparticle dispersion liquid, including DBU (that is, 1,8-diazabicyclo[5.4.0]-7-undecene), DBN (that is, 1,5-diazabicyclo[4.3.0]-5-nonene) as the organic base and indium oxide as the metal oxide, it therefore would be obvious to one of ordinary skill in the art, to use the basic coating composition, which is both disclosed by Chen and encompassed within the scope of the present claims and thereby arrive at the claimed inventions.
When diazabicycloundecene (with molecular weight of 152.24 g/mol) is used as the organic base and titanium oxide (TiO2, with molecular weight of 80 g/mol) is used as the inorganic oxide nanoparticle, it can be derived that 0.1 wt-% to 20 wt-% of an organic base, based on the total weight of the dry inorganic oxide nanoparticles corresponds to a molar ratio of a content of the organic base to a content of a metal component of the inorganic oxide nanoparticle of: 0.0009 to 0.18. (i.e., 0.1/100/152.24/(1/80)=0.0005; 20/100/152.24/(1/80)=0.105), which encompasses or overlaps the range of the presently claimed.
Regarding claim 17, as applied to claim 12, Chen in view of Faure further discloses suitable inorganic oxide nanoparticles have an average primary particle size of 40 nanometers (nm) or less; in certain embodiments, the inorganic oxide nanoparticles have an average primary particle size of 10 nm or less (Chen, [0047]); list of materials in [0169] discloses VK-L10B of gamma alumina nanoparticles of 10 nm (Chen, [0169]).
Response to Arguments
Applicant primarily argues:
“Without conceding the propriety of these allegations, Applicant submits that claim 12 has been amended to recite "[a] metal oxide nanoparticle dispersion liquid comprising...an organic solvent; metal oxide nanoparticles; a carboxylate present on a surface of the metal oxide nanoparticles; and an organic base having an amidine skeleton or a guanidine skeleton." Applicant submits that the art as cited fails to disclose or suggest this combination of features.”
Remarks, p. 6
The Examiner respectfully traverses as follows:
Chen teaches the coating composition can include an organic solvent, or combination of water and an organic solvent (Chen, [0019]), as set forth above on page 4.
Applicant further argues:
“Moreover, those skilled in the art could not have expected the combination of features recited in amended claim 12 to successfully result in a metal oxide nanoparticle dispersion liquid as presently claimed. Indeed, Applicant submits that in light of both the DLVO theory describing inter-particle interactions, as well as known experimental evidence, those skilled in the art would have understood that the generation of electrostatic repulsion sufficient to suppress particle aggregation based on surface potential occurs only when using water, which is a high dielectric constant solvent. As evidence of this point, Applicant submits herewith Nathan D. Burrows et al., Crystalline Nanoparticle Aggregation in Non-Aqueous Solvents, 16 CrystEngComm 1598 (2014), in which the solvent dependence of aggregation states for three types of metal oxide nanoparticles bearing surface potentials were investigated. In all cases, the particles exhibited the greatest resistance to aggregation when water was used as the solvent, an effect that could not be achieved using organic solvents, including acetic acid”
Remarks, p. 6-7
The Examiner respectfully traverses as follows:
Firstly, Chen teaches the coating composition can comprise combination of water and an organic solvent (Chen, [0019]), i.e., a water-organic solvent mixture; and typical organic solvent include alcohols. Therefore, Chen does not require or is limited to using a solvent consisting of organic solvent.
Thirdly, Burrows teaches that titanium dioxide has smaller aggregate sizes in acetic acid comparing to that in isopropyl alcohol and isopropyl alcohol (Burrows, Fig. 4). Therefore, Burrows does not teach that the generation of electrostatic repulsion sufficient to suppress particle aggregation based on surface potential occurs only when using water.
Fourthly, Burrows teaches generally speaking, solvents that strongly coordinate the metal oxide/oxyhydroxide surfaces produce the smallest and least compact aggregates, whereas those that weakly coordinate produce the largest and most compact aggregates (Burrows, Abstract). Given that Burrows does not teach that a water-organic solvent mixture necessarily does not coordinate with metal oxide/ oxyhydroxide surfaces, Burrows does not provide sufficient support that the coating mixture of Chen cannot be further stabilized by a dispersant.
Fifthly, Chen in view of Burrows does not require the mechanism of DLVO theory to achieve the dispersant effect and the effect of prevent aggregation. There are other mechanisms for dispersant effect, such as steric hinderance (Faure, page 10, left column, 2nd paragraph).
Applicant further argues:
“In that regard, as noted in the subject specification, the inventors of the presently claimed invention have surprisingly provided a metal oxide nanoparticle dispersion liquid according to amended claim 12 that exhibits excellent temporal stability of dispersibility. See specification, [0019]. Applicant submits that based on the art as cited, the skilled artisan could not have expected that modifying Chen's aqueous dispersion to include the claimed combination of features would, or even could, provide a successful result.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
The data to show advantageous effects by the metal oxide nanoparticle dispersion in the present invention is not persuasive for the following reasons.
Firstly, Chen in view of Faure teaches that the use of acetate group additive in coating composition for dispersant effect and prevent aggregation of inorganic metal oxide. Therefore, the observed temporal stability of dispersibility disclosed in the specification is not unexpected.
Secondly, the data is not commensurate in scope with the scope of the claims. The specification only provides data for a metal oxide nanoparticle dispersion liquid comprising specific organic solvent of specific amounts, with specific metal oxide nanoparticles, with specific carboxylate present on a surface of the metal oxide nanoparticles of specific amounts, and specific base having an amidine skeleton or a guanidine skeleton of specific amounts; while the present claim broadly recites a metal oxide nanoparticle dispersion liquid comprising any organic solvent of any amounts, with any metal oxide nanoparticles, with any carboxylate present on a surface of the metal oxide nanoparticles of any amounts, and any base having an amidine skeleton or a guanidine skeleton of any amounts.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights