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 amendments filed on December 12, 2025 have been entered. Claims 1-2, 4, 7-8, 10-15, 18-19, and 21 are pending in the application.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4, and 7-8 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Fujii et al (US 2010/0213415 A1).
Regarding Claims 1-2 and 7-8: Fujii teaches inorganic particles, such as zirconium oxide or titanium oxide (para. 0036) that are dispersed in a hydrophobic solvent (toluene or hexane) at 2wt% (para. 0110) and are surface treated with a silicone compound (para. 0013, Formula II) and a silane compound (para. 0035). The silicone is present at 100-800 parts by weight, based on 100 parts of the metal oxide particles, and comprises 50-100% of the total surface treatment (para. 0039). Fujii teaches a working example comprising 262 parts by weight of the silicone based on 100 parts of the metal oxide, and approximately 70 parts of the silane, based on calculations (para. 0103, Example 11). This adds up to 332 parts of total surface treatment. The silane compound is methyl(trimethoxy)silane (para. 0103), which comprises one alkyl group and three alkoxy groups. The silicone compound is 1-vinyl-7-(trimethoxy)siloxy-1,1,3,3,5,5,7,7-octamethyltetrasiloxane, which comprises a dimethylsiloxane repeat unit and methoxy groups (para. 0093-0099).
Not disclosed is the IA/IB value. However, Fujii teaches all of the claimed ingredients in the claimed amounts, wherein the metal oxide particles may be surface treated by any known method (para. 0037). The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount made by a similar process. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
The limitation regarding the viscosity of a mixture of the dispersion and a methyl phenyl silicone recites an intended usage, which does not further limit the dispersion of claim 1.
Regarding Claim 4: Fujii teaches a particle size of 1-100nm (para. 0041), with a working example having zirconium oxide with a diameter of 7nm (para. 0103).
Response to Arguments
Applicant's arguments filed December 12, 2025 have been fully considered but they are not persuasive.
Applicant’s argument regarding the amount of the surface treatment agents is addressed by the new grounds of rejection, as set forth above.
Applicant’s argument that the claimed IA/IB value is dependent on the method of making the dispersion is not persuasive because it is not commensurate in scope with Claim 1. If applicant were to import the limitations of Claim 15 into Claim 1, the claims would be commensurate in scope with the arguments, which would make the arguments proper and persuasive, as set forth in the interview conducted on February 11, 2026.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.N.I./Examiner, Art Unit 1767