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 .
NOTE
Examiner would like to point out that when the claims are in condition for allowance the following amendments need to be made to the withdrawn claims so they can be rejoined.
The amendments are:
Amend “c2) optionally treating the TiO2 nanoparticles with a B-diketone(s), or salt(s) thereof” to “c2) treating the TiO2 nanoparticles with at least one volatile surface modifying compound selected from ethanol, acetylacetone and mixtures thereof” in claim 22.
Cancel claims 24 and 26.
Amend “metal oxide precursor compound(s)” to “titanium dioxide precursor(s)” in claim 30, step (a).
Amend “b2) separating the obtained metal oxide nanoparticles” to “b2) separating the obtained titanium dioxide nanoparticles” in claim 30.
Amend “b3) resuspending the metal oxide nanoparticles” to “b3) resuspending the titanium dioxide nanoparticles” in claim 30.
Amend “b4) optionally treating the metal oxide nanoparticles” to “b4) optionally treating the titanium dioxide nanoparticles” in claim 30.
Amend “c1) treating the metal oxide nanoparticles with a base” to “c1) treating the titanium dioxide nanoparticles with a base” in claim 30.
Amend “c2) optionally treating the TiO2 nanoparticles with the volatile surface modifying compounds, or salts thereof” ” to “c2) treating the TiO2 nanoparticles with at least one volatile surface modifying compound selected from ethanol, acetylacetone and mixtures thereof”.
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.
Claims 16 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN101638222, English translation) in view of Veneir (20220009790).
Wang, abstract, teaches metal oxide nanoparticles chemically modified by a carboxylic acid. The obtained oxide nanoparticles have good dispersibility in organic solvents.
Wang, page 6, teaches the obtained TiO2 nanoparticles were dispersed in a
certain amount of ethanol.
Ethanol as taught by Wang reads on both the volatile surface modifying agent and the solvent as claimed in claim 16.
Therefore, it 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 that 50 wt% of the ethanol in the TiO2 nanoparticles dispersed ethanol can be considered the volatile surface modifying compound and the other 50 wt% of the ethanol can be considered the solvent.
Wang, page 6 of the English translation, teaches TiO2 nanoparticles had a particle size of 9-11nm.
Although Wang teaches nanoparticles with an average diameter from 9-11 nm, this reference does not teach a Dv50.
Veneir teaches zirconium dioxide nanoparticles.
Veneir, paragraph 90 of the PGPUB, teaches the nanoparticles advantageously have a DV50 size between 3 nm and 50 nm and more advantageously between 4 nm and 30 nm.
Veneir, paragraph 123 of the PGPUB, teaches in the absence of amino acid, or when the amino acid does not correspond to that used in the invention, or when a mixture of acid and amine is used, or when in the presence of amino acid used in the invention, the pH is greater than 7, the dispersions obtained are not stable, in particular due to the presence of particle agglomerates.
It 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 to have a DV50 size between 3 nm and 50 nm as taught by Veneir as the particle size as taught by Wang to have a stable dispersion without particle agglomerates.
Regarding claim 22, How the coating comprising nanoparticles are made, particularly the process steps of preparing a mixture, heating the mixture, separating, resuspending and treating with a base, are process limitations not positively claimed as part of the process but as process steps of the claimed product-by-process material. The claimed product the coating is the same product cited to in the prior art Wang in view of Veneir.
In the event any differences can be shown for the product of the product-by- process claims 16, as opposed to the product taught by the reference, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results; see also In re Thorpe, 227 USPQ 964 (CAFC 1985).
Response to Arguments
Applicant’s arguments, filed 3/31/26, with respect to the rejection(s) of claims 16-22 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wang and Veneir.
Applicant argues Wang does not disclose nor suggest the use of β-diketones (acetylacetone), nor the precise control of volatile surface-modifying compound content as recited in the claims. Moreover, Wang's process does not yield the tight Dv50 range nor the specific phase (anatase) control or neutralization chemistry (e.g., potassium ethylate) required by Applicant's process.
Examiner would like to point out that the claimed volatile surface modifying compound can be a B-diketone or an ethanol. Examiner interprets Wang as having a volatile surface modifying compound comprising ethanol in the amount of 50 wt%.
Further, the instant claims do not claim a specific phase (anatase) control or neutralization chemistry (potassium ethylate).
Regarding the Dv50 range, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Wang does not expressly teach the claimed Dv50. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Dv50 does not disclose the entire claimed invention. Rather, Veneir is relied upon to teach claimed elements missing from Wang.
Applicant further argues Veneir, discloses zirconium dioxide nanoparticles with DV50 between 3-50 nm, and is not directed to TiO2 and also does not provide guidance for surface modification or stability in organic solvents as achieved in the instant invention. The combination of Wang and Veneir thus fails to suggest the precise interplay of particle size, surface chemistry, and solvent system required to achieve Applicant's results.
Examiner respectfully traverses.
It is noted that while Veneir does not disclose all the features of the present claimed invention, Veneir is used as teaching reference, namely the Dv50 range, in order to obtain a stable dispersion, 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.
Further, the instant claims do not claim a specific surface modification or a specific stability.
In response to applicant’s remarks on page 11 and the affidavit unexpected results when using the claimed invention, while the Examiner appreciates applicant’s effort to provide additional data to establish the surprising and unexpected results, the data is unpersuasive as set forth below.
First, the data is not commensurate in scope with the scope of the claims.
Specifically, the data only shows a specific UV cured coating comprising a specific type of single titanium dioxide nanoparticles with a specific Dv50 (2.8 nm-3nm); the nanoparticles comprise at specific volatile surface modifying agent (ethanol, aceylacetone) wherein the totally amount of the volatile surface modifying compound is a specific amount (28%) and a specific solvent (ethanol, isopropanol)
while the present claims broadly encompass ANY coating composition comprising SINGLE or MIXED ANY titanium dioxide nanoparticles, wherein the volume average diameter is BROADLY in the range of 1-10nm, wherein the total amount of the volatile surface modifying compounds is in a BROAD range of from 15-50 % by weight, and ANY C2-C4 alcohol solvent.
Additionally, the data does not show using the Dv50 at the lower end value and the upper end value (1; 10) and using the volatile surface modifying compound at the lower end value and the upper end value (15; 50).
It is unclear if the advantageous properties of the claimed invention are due to the specific amount of volatile surface modifying compound, the Dv50 range or the solvent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20040265603 teaches a composite polyelectrolyte.
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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/STEFANIE J COHEN/Examiner, Art Unit 1732 4/1/26