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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12 in the reply filed on 09/09/2025 is acknowledged. The traversal is on the ground(s) that JPH07-235317 is silent about using a catalyst. However, the newly cited US20130202895 discloses the limitation of claim 1 set forth below. The Examiner apologizes for any inconvenience this may have caused.
Claim Rejections - 35 USC § 112
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.
The term “fine” in claims 2-3 is a relative term which renders the claim indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Different people interpret “fine” with different size range.
Regarding claim 5, it is not clear the content of each component is based on what? The Examiner treats the content of each component is based on the total mass of the components ( zirconium alkoxide + yttrium compound +water + chelating agent + catalyst + organic solvent).
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.
Claim(s) 1- 2, 4, 6-12 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by US20130202895 (US’895).
Regarding claim 1, US’895 discloses making a coating composition comprising mixing coating composition components comprising:
an inorganic oxide precursor AMOx based on at least one inorganic element A selected from the group consisting of aluminum, silicium, titanium, zirconium, niobium, indium, tin, antimony, tantalum, and bismuth such as zirconium alkoxide;
an inorganic oxide precursor BMOx based on at least one inorganic element B selected from the group consisting of scandium, yttrium, lanthanum, and the lanthanoids such as yttrium nitrate;
water;
an organic solvent;
a catalyst;
and a chelating anent. See claim 1; [0017]; [0021]; [0029]; [0051] and examples 1-6.
Regarding claim 2, US’895 discloses the coating composition comprising inorganic nano-particle having at least an outer layer that comprises a mixed inorganic oxide based on inorganic oxide precursor AMOx and inorganic oxide precursor BMOx such as mixed oxide of zirconium and yttrium. See [0056].
Regarding claim 4, US’895 discloses that the nano-particles can be of any suitable size, but preferably have an average particle size of below 500 nm, more preferably below 250, 125, 100 nm. The amount of nano-particles in the coating composition according to the invention is dependent on its use as coating and can vary widely. See [0039] and [0050].
Regarding claim 6, US’895 discloses that zirconium butoxide is used. See [0017].
Regarding claim 7, US’895 discloses an inorganic oxide precursor BMOx based on at least one inorganic element B selected from the group consisting of scandium, yttrium, lanthanum, and the lanthanoids such as yttrium nitrate. See [0021].
Regarding claims 8-9, US’895 discloses that 3,5-heptanedione is used as a chelating agent, See [0054].
Regarding claim 10, US’895 discloses that nitric acid is used. See [0089].
Regarding claims 11-12, US’895 discloses that preferred solvents are methanol, ethanol, iso-propanol or 1-methoxypropan-2-ol; more preferably comprising 0.1-10 wt % of water. Iso-propanol/water is specifically preferred. US’895 discloses that zirconium butoxide is used. See [0017] and [0029].
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20130202895 (US’895)
Regarding claim 3, US’895 discloses the coating composition comprising inorganic nano-particle having at least an outer layer that comprises a mixed inorganic oxide based on inorganic oxide precursor AMOx and inorganic oxide precursor BMOx such as mixed oxide of zirconium and yttrium. See [0056]. US’895 discloses the amount of nano-particles in the coating composition is dependent on its use as coating and can vary widely. It is well held that discovering an optimum value of a result-effective variable involves only routine skill in the art. In re Boesch, 617, F.2d 272, 205 USPQ 215 (CCPA 1980). In the instant case, the content of the nano particles is a result-effective variable, because the amount of nano-particles in the coating composition is dependent on its use as coating and can vary widely. Therefore, it would have been obvious to one skilled in the art to have optimized the content of the nano particles according to the intended use of the coating composition.
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731