DETAILED ACTION
Claim(s) 12-17 and 21-22 were rejected in Office Action mailed on 04/07/2026.
Applicant filed a response, amended claim(s) 12, on 07/07/2026.
Claim(s) 1-22 are pending, and claim(s) 1-11 and 18-20 are withdrawn.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.
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 § 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]);
the coating compositions can include an organic solvent (Chen, [0019]).
Chen further teaches the coating (i.e., film) is formed by condensation of the inorganic oxide nanoparticles (Chen, [0024]), therefore the organic base contained in the film would necessarily be attached to the metal oxide nanoparticles, directly or indirectly, in order to form the film.
Further regarding claim 12, 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]).
Chen further teaches the coating (i.e., film) is formed by condensation of the inorganic oxide nanoparticles (Chen, [0024]), therefore the organic base contained in the film would necessarily be attached to the metal oxide nanoparticles, directly or indirectly, in order to form the film.
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 the rejections, Applicant submits that the art as cited fails to disclose or suggest the combination of features recited in amended claim 12, including 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, wherein the organic base is attached to the metal oxide nanoparticles.
Indeed, to the extent that Chen allegedly discloses an organic base, the reference discloses that "the organic base functions as a catalyst. The inorganic oxide nanoparticles have surface hydroxy groups, which condense to form a coating, preferably, a continuous coating. This condensation reaction can happen without the presence of base, but only at elevated temperatures. With the presence of a catalytic amount of an organic base, the condensation reaction becomes much faster and it can occur at ambient temperatures." See Chen, [0026], (emphasis added).
Nowhere does Chen disclose or suggest an organic base attached to metal oxide nanoparticles, much less the effect provided by this feature in combination with the other features of amended claim 12. For example, as explained in the subject application:
When the organic base includes at least one compound selected from the group consisting of diazabicycloundecene, diazabicyclononene, and tetramethylguanidine, it is presumed that the metal oxide nanoparticles to which these compounds are attached are prevented from approaching each other and are less likely to aggregate, and the temporal stability of the dispersibility of the metal oxide nanoparticles increases, because these compounds have a large steric hindrance.
See specification, [0085].
Nowhere does Chen disclose or suggest this effect. In fact, Chen's organic base is provided for a completely different function, i.e., as a condensation catalyst.”
Remarks, p. 6-7
The Examiner respectfully traverses as follows:
Firstly, Chen further teaches the coating (i.e., film) is formed by condensation of the inorganic oxide nanoparticles (Chen, [0024]), therefore the organic base contained in the film would necessarily be attached to the metal oxide nanoparticles, directly or indirectly, in order to form the film, as set forth above on pages 4 and 7 respectively.
Secondly, it is not required for the organic base to perform the same function as that of the present invention. Given that Chen in view of Shinohara, and Chen in view of Faure meet the presently claimed metal oxide nanoparticle dispersion liquid, Chen in view of Shinohara, and Chen in view of Faure meet the present claim.
Applicant further argues:
“Shinohara is cited for its disclosure regarding citric acid. See Office Action, page 4. Faure is cited for its disclosure regarding carboxylates. See Office Action, page 7. Without conceding the propriety of the Office's allegations regarding these references, Applicant submits that neither reference fulfills the above deficiencies in Chen.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Firstly, it is noted that while Shinohara does not disclose all the features of the present claimed invention, Shinohara is used as teaching reference, namely adsorption of citric acid on metal oxide particles, in order to prevent particle aggregation, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Secondly, it is noted that while Faure does not disclose all the features of the present claimed invention, Faure is used as teaching reference, namely dispersion and surface functionalization of metal nanoparticles for example for coatings, i.e., wherein acetate groups can be used as dispersants, in order to prevent aggregation of TiO2 particles, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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