DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 13-15 and 17-33 are pending and represent all claims currently under consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/23/2026 has been entered.
Response to Arguments
Applicant's arguments filed 01/23/2026 have been fully considered but they are not persuasive.
Applicant states that a person skilled in the art would understand that the boric acid described in paragraph 0030 is merely a B2O3 source, which is dehydrated to form B2O3 during the melting step, and therefore Beppu’s particles have no boron compound represented by formula (I) as defined in the claim. Applicant argues that experimental evidence demonstrating the removal of boron compounds in Beppu’s fine particles to support the Applicant’s position would be difficult to perform (Remarks, pages 5-6). This argument is not persuasive, because Beppu does not teach or suggest that the boron compound is considered to be fully removed upon melting or that precipitated CeO2 crystals are pure CeO2 with no boron compound present. Further, Beppu teaches the CeO2 source functions as a glass-forming component in collaboration with the after-mentioned RO source and B2O3 source by melting (Beppu, paragraph 0028), suggesting a reaction occurs between the components during the melting step, which would result in the compound of formula (I) as defined in the claim. As previously stated, testing the method of Beppu to compare the instant invention to the closest prior art is needed in order to support the Applicant’s arguments. Arguments presented by the applicant cannot take the place of evidence in the record. See MPEP 716.01(c).
Applicant restated the previous argument that the boron compound of Beppu is considered to have been removed prior to obtaining the CeO2 fine particles (Remarks, page 6). As previously stated, this argument is not persuasive, because Beppu specifically teaches the chemical composition of the resulting “CeO2 fine particles” to comprise both cerium oxide and B2O3 (Beppu, page 4, paragraph 0056; table 1). As stated above, Beppu does not teach or suggest that the boron compound is considered to be fully removed.
Applicant restated the previous argument that the “stabilizer” referenced in paragraph 0048 of Beppu refers to a stabilizer added later when preparing the obtained CeO2 fine particles into a slurry and does not refer to impurities carried over from the crystallization stage, and therefore Beppu does not teach the boron compound acts as the stabilizer (Remarks, pages 6-7). As previously stated, this argument is not persuasive, because Beppu teaches the cerium oxide particle as claimed, and does not teach or suggest that the boron compound is an impurity or that it is considered to be fully removed upon washing. A chemical composition and its properties are inseparable, suggesting the properties disclosed by the Applicant are necessarily present. See MPEP § 2112.01(II). As defined by the instant specification, the boron compound is used as a stabilizing agent (instant specification, page 6, paragraph 0017), suggesting the boron compound taught by Beppu would also be capable of acting as the “stabilizer”.
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.
Claim 33 is 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.
Regarding claim 33, the phrase “wherein 0.001 mole or more of boron relative to 1 mole of cerium element is included” is indefinite, because it is unclear whether the amounts of boron and cerium element are intended to refer to amounts of each included in the production step in the “solution comprising a boron compound represented by formula (I) and a cerium (III) ion” or amounts of each in the final cerium oxide nanoparticle. It is the Examiner’s interpretation that this claim refers to the amounts of each included in the solution to produce the cerium oxide nanoparticle.
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.
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.
Claims 13-15, 17, 21-24, 29, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Beppu (US 20070204519 A1; IDS reference, 11/23/2022). The reference was cited previously by the Examiner.
Regarding claim 13, Beppu teaches cerium oxide fine particles (Beppu, abstract) comprising cerium oxide and B2O3 (i.e., a boron compound; Beppu, table 1) with an average size of 5-200 nm (i.e., nanoparticles; Beppu, page 2, paragraph 0021). If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113(I). Beppu further teaches the source of CeO2 can be Ce(NO3)3 (i.e., a cerium (III) ion; Beppu, page 2, paragraph 0028), the source of boron is preferably boric acid (i.e., a compound of chemical formula (I) as defined above; Beppu, page 2, paragraph 0029), and an oxidizing agent (i.e., oxidant) can be used (Beppu, page 4, paragraph 0048), implying the same final structure.
Beppu is considered to be analogous to the claimed invention, because both are in the same field of cerium oxide nanoparticles. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu.
Regarding claim 14, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches a pH adjustor and oxidizing agent (i.e., oxidant) can be used and the pH is controlled to be preferably from 4-9 (Beppu, page 4, paragraph 0048), which overlaps the claimed range of 5 or more. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I). Beppu further teaches that it is known in the art to utilize a pH of 5-10 during the cerium oxide particle production process (Beppu, page 1, paragraph 0006).
Regarding claim 15, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches the source of boron is preferably boric acid (i.e., a compound of chemical formula (I) as defined above; Beppu, page 2, paragraph 0029).
Regarding claim 17, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches cerium oxide fine particles (Beppu, abstract) with an average size of 5-200 nm (i.e., nanoparticles; Beppu, page 2, paragraph 0021), wherein a source of boron is preferably boric acid (i.e., a compound of chemical formula (I) as defined above; Beppu, page 2, paragraph 0029) and the source of CeO2 can be Ce(NO3)3 (i.e., a cerium (III) ion. Beppu does not teach the local maximum absorptions as measured in a XANES spectrum, but since the same cerium oxide particle structure is produced in the same way, the same chemical properties would be expected. See MPEP § 2112.01(II).
Regarding claim 21, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022).
Regarding claim 22, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022), which can further include an oxidizing agent depending on the purpose of use (Beppu, page 4, paragraph 0048). It would be reasonably expected by one of reasonable skill in the art that when an oxidizing agent is present, the specific purpose of use of the dispersion could be as an oxidant.
Regarding claim 23, Beppu teaches all the elements of the current invention as applied to claim 13. The term “antivirus agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II).
Regarding claim 24, Beppu teaches all the elements of the current invention as applied to claim 13. The term “antibacterial agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II).
Regarding claim 29, Beppu teaches all the elements of the current invention as applied to claim 21. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022), which can further include an oxidizing agent depending on the purpose of use (Beppu, page 4, paragraph 0048). It would be reasonably expected by one of reasonable skill in the art that when an oxidizing agent is present, the specific purpose of use of the dispersion could be as an oxidant.
Regarding claim 33, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches a molar ratio of 30:60 of the boron source B2O3 to CeO2 of 30:60, or 0.5 mole of boron relative to 1 mole of cerium (Beppu, page 5, table 3), which lies within the claimed range of 0.001 moles or more of boron relative to 1 mole of cerium element included.
Claims 17, 19-20, 25-28, and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Beppu (US 20070204519 A1; IDS reference, 11/23/2022) as applied to claims 13-15, 17, 21-24, 29, and 33, further in view of Zhang (Chemistry of Materials, 2001; IDS reference, 07/30/2024). The references were cited previously by the Examiner.
Regarding claim 17, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu teaches cerium oxide fine particles (Beppu, abstract) with an average size of 5-200 nm (i.e., nanoparticles; Beppu, page 2, paragraph 0021), wherein a source of boron is preferably boric acid (i.e., a compound of chemical formula (I) as defined above; Beppu, page 2, paragraph 0029). Beppu does not teach the local maximum absorptions as measured in a XANES spectrum, but since the same cerium oxide particle structure is produced in the same way, the same chemical properties would be expected. See MPEP § 2112.01(II). Zhang further teaches cerium oxide nanoparticles to have XANES spectra absorbance peaks (i.e., local maximum absorptions) at 5728.2 and 5735.3 eV (Zhang, table 1, examples 4-7), which lie within the claimed ranges.
Beppu and Zhang are considered to be analogous to the claimed invention, because all are in the same field of cerium oxide nanoparticles. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have measured the X-ray absorption properties of the nanoparticle of Beppu, because Zhang teaches this measurement to be an essential measure of electronic properties (Zhang, page 4192, section 1). It would be reasonable to expect cerium oxide nanoparticles would result in similar local maximum absorptions.
Regarding claim 19, Beppu teaches cerium oxide fine particles (Beppu, abstract) with an average size of 5-200 nm (i.e., nanoparticles; Beppu, page 2, paragraph 0021), wherein a source of boron is preferably boric acid (i.e., a compound of chemical formula (I) as defined above; Beppu, page 2, paragraph 0029). Beppu does not teach the local maximum absorptions as measured in a XANES spectrum. Zhang, however, teaches cerium oxide nanoparticles to have XANES spectra absorbance peaks (i.e., local maximum absorptions) at 5728.2 and 5735.3 eV (Zhang, table 1, examples 4-7), which lie within the claimed ranges. As above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have measured the X-ray absorption properties of the nanoparticle of Beppu, because Zhang teaches this measurement to be an essential measure of electronic properties (Zhang, page 4192, section 1). It would be reasonable to expect cerium oxide nanoparticles would result in similar local maximum absorptions.
Regarding claim 20, Beppu and Zhang together teach all the elements of the current invention as applied to claim 19. Beppu teaches the source of boron is preferably boric acid (i.e., a compound of chemical formula (I) as defined above; Beppu, page 2, paragraph 0029).
Regarding claim 25, Beppu and Zhang together teach all the elements of the current invention as applied to claim 19. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022).
Regarding claim 26, Beppu and Zhang together teach all the elements of the current invention as applied to claim 19. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022), which can further include an oxidizing agent depending on the purpose of use (Beppu, page 4, paragraph 0048). It would be reasonably expected by one of reasonable skill in the art that when an oxidizing agent is present, the specific purpose of use of the dispersion could be as an oxidant.
Regarding claim 27, Beppu teaches all the elements of the current invention as applied to claim 19. The term “antivirus agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II).
Regarding claim 28, Beppu teaches all the elements of the current invention as applied to claim 19. The term “antibacterial agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II).
Regarding claim 30, Beppu teaches all the elements of the current invention as applied to claim 13. The term “antivirus agent” is a recitation of the intended use of a dispersion solution comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches a dispersion solution comprising the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II).
Regarding claim 31, Beppu teaches all the elements of the current invention as applied to claim 13. The term “antibacterial agent” is a recitation of the intended use of a dispersion solution comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches a dispersion solution comprising the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II).
Regarding claim 32, Beppu and Zhang together teach all the elements of the current invention as applied to claim 25. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022), which can further include an oxidizing agent depending on the purpose of use (Beppu, page 4, paragraph 0048). It would be reasonably expected by one of reasonable skill in the art that when an oxidizing agent is present, the specific purpose of use of the dispersion could be as an oxidant.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Beppu (US 20070204519 A1; IDS reference, 11/23/2022) as applied to claims 13-15, 17, 21-24, 29, and 33, further in view of Motonari (Translation of JP 2005270835 A; IDS reference, 11/23/2022). The references were cited previously by the Examiner.
Regarding claim 18, Beppu teaches all the elements of the current invention as applied to claim 13. Beppu does not teach a transition metal in the claimed ratio. Motonari teaches fine particles comprising cerium oxide and titanium oxide (i.e., a transition metal; Motonari, claim 2), which are nanosized (Motonari, page 17, paragraph 0001), and further teaches the molar ratio of cerium oxide to other inorganic compound (i.e., titanium oxide) is preferably between 95:5 to 50:50 (Motonari, page 19, paragraph 0028), which overlaps the claimed range of 0.0001 mole or more of a transition metal relative to 1 mole of cerium element. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Beppu and Motonari are considered to be analogous to the claimed invention, because both are in the same field of cerium oxide nanoparticles. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cerium oxide nanoparticle taught by Beppu to have included titanium oxide in the claimed amount, because Beppu teaches an oxidizing agent can be included (Beppu, page 4, paragraph 0048) and Motonari teaches titanium oxide is useful for its antibacterial effects due to its oxidizing power (Motonari, page 17, paragraph 0002).
Claims 23-24 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Beppu (US 20070204519 A1; IDS reference, 11/23/2022) as applied to claims 13-15, 17, 21-24, 29, and 33, further in view of Vazirov (Journal of Physics, 2018). The references were cited previously by the Examiner.
Regarding claim 23, Beppu teaches all the elements of the current invention as applied to claim 13. The term “antivirus agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II). Vazirov further teaches cerium oxide nanoparticles exhibit antiviral properties (Vazirov, abstract).
Beppu and Vazirov are considered to be analogous to the claimed invention, because both are in the same field of cerium oxide nanoparticles. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu and it would be reasonable to expect that cerium oxide nanoparticles demonstrate antiviral properties as taught by Vazirov, and would therefore be useful as an antivirus agent.
Regarding claim 24, Beppu teaches all the elements of the current invention as applied to claim 13. The term “antibacterial agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II). Vazirov further teaches cerium oxide nanoparticles exhibit antibacterial properties (Vazirov, abstract). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu and it would be reasonable to expect that cerium oxide nanoparticles demonstrate antibacterial properties as taught by Vazirov, and would therefore be useful as an antibacterial agent.
Regarding claim 30, Beppu teaches all the elements of the current invention as applied to claim 21. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022). The term “antivirus agent” is a recitation of the intended use of a dispersion solution comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches a dispersion solution comprising the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II). Vazirov teaches cerium oxide nanoparticles exhibit antiviral properties (Vazirov, abstract). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu and it would be reasonable to expect that cerium oxide nanoparticles demonstrate antiviral properties as taught by Vazirov, and would therefore be useful as an antivirus agent.
Regarding claim 31, Beppu teaches all the elements of the current invention as applied to claim 21. Beppu teaches a slurry of CeO2 particles dispersed in a liquid medium (i.e., a dispersion solution; Beppu, page 2, paragraph 0022). The term “antibacterial agent” is a recitation of the intended use of a dispersion solution comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches a dispersion solution comprising the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II). Vazirov teaches cerium oxide nanoparticles exhibit antibacterial properties (Vazirov, abstract). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu and it would be reasonable to expect that cerium oxide nanoparticles demonstrate antibacterial properties as taught by Vazirov, and would therefore be useful as an antibacterial agent.
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Beppu (US 20070204519 A1; IDS reference, 11/23/2022) and Zhang (Chemistry of Materials, 2001; IDS reference, 07/30/2024) as applied to claims 13-15, 17, 21-24, 29, and 33, and further in view of Vazirov (Journal of Physics, 2018). The references were cited previously by the Examiner.
Regarding claim 27, Beppu and Zhang together teach all the elements of the current invention as applied to claim 19. The term “antivirus agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II). Vazirov further teaches cerium oxide nanoparticles exhibit antiviral properties (Vazirov, abstract).
Beppu, Zhang, and Vazirov are all considered to be analogous to the claimed invention, because all are in the same field of cerium oxide nanoparticles. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu and Zhang and it would be reasonable to expect that cerium oxide nanoparticles demonstrate antiviral properties as taught by Vazirov, and would therefore be useful as an antivirus agent.
Regarding claim 28, Beppu and Zhang together teach all the elements of the current invention as applied to claim 19. The term “antibacterial agent” is a recitation of the intended use of a composition comprising a cerium oxide nanoparticle as claimed. Patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure. See MPEP § 2111.02. As above, Beppu teaches the same cerium oxide particle structure is produced in the same way, and therefore the same properties would be expected. See MPEP § 2112.01(II). Vazirov further teaches cerium oxide nanoparticles exhibit antibacterial properties (Vazirov, abstract). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention based on the teachings of Beppu and Zhang and it would be reasonable to expect that cerium oxide nanoparticles demonstrate antibacterial properties as taught by Vazirov, and would therefore be useful as an antibacterial agent.
Conclusion
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613