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 .
Status of Claims
Claims 1-2, 4, 8-9, and 14 are examined in this office action as claim 3 is canceled, claim 14 is new, claims 5-7 and 10-13 are withdrawn as directed to a nonelected invention, and claims 1, 4, and 8-9 were amended in the reply dated 6/8/26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claims 1-2, 4, 8-9, and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites a metal paste containing at least metal nanoparticles (A) having a number average primary particle size of 10 to 100 nm, wherein a cumulative weight loss value (L100) when a temperature is raised from 40°C to 100°C is 75 or less, a cumulative weight loss value (L150) when temperature is raised from 40°C to 150°C is 90 or more, and cumulative weight loss value (L200) when temperature is raised from 40°C to 200°C is 98 or more based on 100 cumulative weight loss value (L700) when the paste is heated from 40°C to 700°C at a heating rate of 30C/min in a nitrogen atmosphere. Claim 14 includes similar limitations but requires the solvent octanediol. Thus applicant’s claim covers all metal pastes that include particles having a number average primary particle size of 10 to 100 nm in conjunction with the recited weight loss values. Applicant’s specification merely provides examples where the paste is sintered at 250°C and where at least one solvent within 50 degrees of the sintering temperature and at least one solvent whose boiling point or decomposition temperature is greater than 50 degrees above the sintering temperature (applicant’s specification, paragraph [0043]). However, these features do not necessarily result in the properties as claimed as shown in Table 1 in the specification. Here applicant provides examples using only silver, with a mixture of 17 and 800nm particles thereof, and incorporating one proprietary solvent into all of the examples (SOLPLUS540). This data shows that even when incorporating amounts of the solvents as claimed in claims 3 and 4, this does not necessarily result in the properties in claim 1. Thus, while applicant provides some limited examples within the scope of the claim, neither the specification nor these examples show how these weight loss values are achieved across the scope of the claims and therefore the claims lack written description support. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc) and MPEP § 2163.03(V). Claims 2-4 and 8-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claims 1-4, 8-9 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim 1 covers silver metal pastes with nanoparticles having an average particle size of 10 to 100 nm and where the paste has cumulative weight losses of 75 or less from 40 to 100°C, 90 or more from 40 to 150°C, and 98 or more from 40 to 200°C. Claim 14 includes similar limitations but requires the solvent octanediol. The specification does not provide direction on how to achieve these levels of cumulative weight loss with all compositions of paste and with all types of metal. The specification merely provides a series of examples involving silver nanoparticles with an average particle size of 17nm and incorporating at least two solvents with differing boiling points with at least one within 50 degrees of the sintering temperature of 250°C and at least one other solvent with a boiling point greater than 50 degrees above the sintering temperature of 250°C. All of these examples include the solvent SOLPLUS540, but this is a proprietary blend of phosphate ester dispersants and therefore it is not clear how this paste is formed to have these properties outside of using this proprietary material. It is clear from the data disclosed in Table 1 that mere inclusion of solvents with boiling points within these ranges does not necessarily result in the claimed weight loss properties.
At the time of filing, the state of the art was such that metal pastes are known and that weight losses of a paste can be calculated, but how mixtures of chemicals and their interactions with metal nanoparticles result in weight loss of the resultant paste is not known. Thus, the disclosed examples in Table 1 of the specification, using a proprietary solvent SOLPLUS540 does not bear a reasonable correlation to the full scope of the claim. Applicant is merely providing examples using a single type of metal, with a mixture of 17 and 800nm particles thereof, and incorporating one proprietary solvent into all of the examples. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the invention recited in the claim(s). A person of ordinary skill would need to experiment with numerous different metals and innumerable different combinations of solvents to find combinations that achieve these properties. Applicant’s data in Table 1 of the specification makes clear that this is not merely a function of the composition of these two or more different boiling point solvents as in claims 3-4 and as such applicant’s disclosure does not provide guidance on what types of materials achieve these properties. Claims 2-4 and 8-9 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 14 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.
Claim 14 contains the trademark/trade name Terusolve MTPH, Terusolve TOE-100, Terusolve DTO-210, Terusolve IPG-2Ac, Terusolve THA- 90, and Terusolve THA-70. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe proprietary and, accordingly, the identification/description is indefinite.
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 1-2, 4, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0143692 A1 of Nakajo.
As to claims 1-2, Nakajo discloses a metal paste for low temperature bonding (Nakajo, paragraph [0010]), meeting the limitation of a metal paste for binding. Nakajo discloses where the metal paste comprising: a metal particle with an average particle size of 1 to 100 μm; a metal nanoparticle with an average particle size of 1 to 500 nm; a stress relieving material; and a dispersion medium to disperse the metal particle, metal nanoparticle, and the stress relieving material (Nakajo, paragraph [0010]), overlapping the limitation of a metal nanoparticle (A) having an average primary particle size of 10 to 100 nm. “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). Nakajo discloses where the metal nanoparticles are silver nanoparticles (Nakajo, paragraph [0031]). Nakajo discloses where the metal paste contains additives such as antioxidants, surfactants, antifoaming agent, and ion trapping agents (Nakajo, paragraph [0043]), meeting the limitation of the metal paste comprising additives. Nakajo discloses where the sintering temperature is between 200 and 400°C (Nakajo, paragraph [0062]), overlapping the claimed range of 200 to 350°C. “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). Nakajo discloses where paste contains a dispersion medium (solvent) for dispersing solid particles such as metal particles and metal nanoparticles and where this dispersion medium may be a mixture of two or more solvents with a boiling point of 150-400°C (Nakajo, paragraph [0039]), overlapping the claimed range of a boiling points being 50 degrees less than the sintering temperature to 50 degrees above the sintering temperature which with a sintering temperature of 200 to 350°C would mean a boiling point of 150 to 400°C. Nakajo also discloses specific examples where between 7.36%, 8.48% and 9.12% α-terpineol are used as the dispersant (Nakajo, paragraph [0075] and Tables 2 and 3), meeting the limitation 5% by mass or more and 10% by mass or less of a solvent with the proviso that the solvent have a boiling point that is in the range of Tb-50 (°C) or more and Tb+50 (°C) or less as terpineol has a boiling point of 213°C.
As Nakajo discloses a metal paste with the claimed size of metal nanoparticles used in conjunction with organic compounds that boil or decompose at lower and higher temperatures, between 150°C and 400°C, Nakajo is disclosing a structurally identical metal paste and therefore it would be expected to exhibit identical properties of a cumulative weight loss value (L100) when a temperature is raised from 40°C to 100°C is 75 or less, a cumulative weight loss value (L150) when temperature is raised from 40°C to 150°C is 90 or more, and cumulative weight loss value (L200) when temperature is raised from 40°C to 200°C is 98 or more as well as where a cumulative weight loss value (L200) when a temperature is raised from 40°C to 200°C is 99.9 or less as required in claim 2. “Products of identical chemical composition can not have mutually exclusive properties." 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
As to claim 4, Nakajo discloses where the sintering temperature is between 200 and 400°C (Nakajo, paragraph [0062]), overlapping the claimed range of 200 to 350°C. Nakajo discloses where paste contains a dispersion medium (solvent) for dispersing solid particles such as metal particles and metal nanoparticles and where this dispersion medium may be a mixture of two or more solvents with a boiling point of 150-400°C (Nakajo, paragraph [0039]), overlapping the claimed range of whose boiling point or decomposition temperature is higher than Tb + 50 (°C) when a sintering temperature is Tb (°C) which with a sintering temperature of 200 to 350°C would mean a boiling point being greater than 250 to greater than 400°C. As Nakajo discloses selecting the same sintering temperature and selecting a combination of solvents and Nakajo discloses specific examples where between 7.36%, 8.48% and 9.12% of overall solvent are used as the dispersant (Nakajo, paragraph [0075] and Tables 2 and 3), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a second solvent within this overlapping boiling point range in an amount of less than 1.5 mass%, thereby properly dispersing the solid particles (Nakajo, paragraph [0039]).
As to claim 8, Nakajo discloses including a metal particle with an average particle size of 1 to 100 μm (Nakajo, paragraph [0010]) and where the metal particles are silver (Nakajo, paragraph [0022]). “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).
As to claim 9, Nakajo discloses where the content of the metal nanoparticles is preferably 0.01 to 60 mass parts per 100 mass parts of metal paste (Nakajo, paragraph [0034]) whereas Nakajo also discloses where the content of the metal particles is preferably 20 to 95 mass parts per 100 mass parts of metal paste (Nakajo, paragraph [0028]). This means that the ratio of nanoparticles to particles is 0.000105 to 3, overlapping the claimed range of 0.25 or less. “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). Further, Nakajo discloses examples where 10 parts of nanoparticles are added with respect to 80 parts of particles, for a ratio of 0.125 (Nakajo, Table 2), meeting the claim limitation.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0143692 A1 of Nakajo in view of US 2015/0028085 A1 of Endoh.
As to claim 14, Nakajo discloses a metal paste for low temperature bonding (Nakajo, paragraph [0010]), meeting the limitation of a metal paste for binding. Nakajo discloses where the metal paste comprising: a metal particle with an average particle size of 1 to 100 μm; a metal nanoparticle with an average particle size of 1 to 500 nm; a stress relieving material; and a dispersion medium to disperse the metal particle, metal nanoparticle, and the stress relieving material (Nakajo, paragraph [0010]), overlapping the limitation of a metal nanoparticle (A) having an average primary particle size of 10 to 100 nm. “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). Nakajo discloses where the metal nanoparticles are silver nonparties (Nakajo, paragraph [0031]). Nakajo discloses where the metal paste contains additives such as antioxidants, surfactants, antifoaming agent, and ion trapping agents (Nakajo, paragraph [0043]), meeting the limitation of the metal paste comprising additives. Nakajo discloses where the sintering temperature is between 200 and 400°C (Nakajo, paragraph [0062]), overlapping the claimed range of 200 to 350°C. “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). Nakajo discloses where paste contains a dispersion medium (solvent) for dispersing solid particles such as metal particles and metal nanoparticles and where this dispersion medium may be a mixture of two or more solvents with a boiling point of 150-400°C (Nakajo, paragraph [0039]), overlapping the claimed range of a boiling points being 50 degrees less than the sintering temperature to 50 degrees above the sintering temperature which with a sintering temperature of 200 to 350°C would mean a boiling point of 150 to 400°C. Nakajo also discloses specific examples where between 7.36%, 8.48% and 9.12% α-terpineol are used as the dispersant (Nakajo, paragraph [0075] and Tables 2 and 3), meeting the limitation 5% by mass or more and 10% by mass or less of a solvent with the proviso that the solvent have a boiling point that is in the range of Tb-50 (°C) or more and Tb+50 (°C) or less as terpineol has a boiling point of 213°C.
However, Nakajo does not disclose where the solvent includes octanediol nor where the metal nanoparticles are coated with a capping substance selected from the group consisting of octanoic acid, heptanoic acid, hexanoic acid, pentanoic acid, butanoic acid, propanoic acid, oxalic acid, malonic acid, ethylmalonic acid, succinic acid, methylsuccinic acid, glutaric acid, adipic acid, pimelic acid, suberic acid, sorbic acid, maleic acid, hexylamine, octylamine, the coating amount of the capping substance with respect to the silver nanoparticles is 1.0% by mass or more and 3.0% by mass or less.
Endoh relates to the same field of endeavor of bonding materials utilizing silver nanoparticles (Endoh, paragraph [0001]). Endoh teaches where hexanoic acid, heptanoic acid, octanoic acid, sorbic acid, benzoic acid, salicylic acid, m-hydroxybenzoic acid, p-hydroxybenzoic acid, and adipic acid is used to coat the silver nanoparticles as this allows for them to be stably present without aggregation during drying or dispersing in a polar solvent (Endoh, paragraph [0051]). Endoh teaches examples where the coating substance is 1% by mass to the silver in the powder (Endoh, paragraph [0115]), meeting the claim limitation of 1 to 3% by mass of capping substance. Endoh also teaches using 2-ethyl-1,3-hexanediol (trade name: octanediol, available from Kyowa Hakko Chemical Co., Ltd.) (boiling point: 244° C.) as a solvent in the paste for bonding (Endoh, paragraph [0077]). Endoh teaches that this polar solvent disperses the particles to prepare a paste (Endoh, paragraph [0074]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 1% of a capping agent of hexanoic acid, heptanoic acid, octanoic acid, sorbic acid, benzoic acid, salicylic acid, m-hydroxybenzoic acid, p-hydroxybenzoic acid, and adipic acid to coat the silver nanoparticles as taught by Endoh to the silver nanoparticles in the metal paste disclosed in Nakajo, thereby allows for the silver nanoparticles to be stably present without aggregation during drying or dispersing in a polar solvent (Endoh, paragraph [0051]).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute 2-ethyl-1,3-hexanediol as taught by Endoh into the paste disclosed in Nakajo, thereby dispersing the particles into a paste. This also constitutes simple substitution of one known element for another to obtain predictable results as Nakajo only differs from the claims by the inclusion of octanediol, Endoh teaches that 2-ethyl-1,3-hexanediol is used in the dispersion of silver nanoparticles into a paste for bonding and therefore one of ordinary skill in the art could have substituted a 2-ethyl-1,3-hexanediol for α-terpineol to produce a paste and the results of the substitution would have been predictable, see MPEP § 2143(I)(B).
As Nakajo discloses a metal paste with the claimed size of metal nanoparticles used in conjunction with organic compounds that boil or decompose at lower and higher temperatures, between 150°C and 400°C, Nakajo is disclosing a structurally identical metal paste and therefore it would be expected to exhibit identical properties of a cumulative weight loss value (L100) when a temperature is raised from 40°C to 100°C is 75 or less, a cumulative weight loss value (L150) when temperature is raised from 40°C to 150°C is 90 or more, and cumulative weight loss value (L200) when temperature is raised from 40°C to 200°C is 98 or more as well as where a cumulative weight loss value (L200) when a temperature is raised from 40°C to 200°C is 99.9 or less as required in claim 2. “Products of identical chemical composition can not have mutually exclusive properties." 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II).
Response to Declaration under Rule 1.132
The declaration under 37 CFR 1.132 filed 6/8/26 is insufficient to overcome the rejection of claims 1-2, 4, 8-9, and 14 based upon 35 USC 112(a) and 35 USC 103 as set forth in the last Office action because:
Declarant provides that experiments were conducted using silver nanoparticles with an average particle size of 100 nm and forming a paste with 9.35% octanediol and 0.95% Butoxyethoxyacetic acid (Declaration, point 8 and 12). Declarant shows that the cumulative wight loss values for L100, L150, and L200 are 15.2, 98.5 and 100.3 respectively (Declarant, point 24). Declarant argues that this data shows that the claimed invention can be practiced with the materials/solvents identified in the specification and reflects that a person of ordinary skill in the art would have been able to make and use the claimed invention based on the disclosure provided without undue experimentation (Declaration, point 25).
However, this experiment is with a singular solvent combined with a singular “additive” and singular size of silver nanoparticles. This singular experiment with one solvent an one additive does not demonstrate that described the full scope of the claimed invention and shown that it is enabled. Claim 1 is open to all possible solvents and all possible additives and this declaration has provided one example that achieves the claimed properties. Similarly, while new claim 14 requires octanediol, it also allows for 41 other solvents as well as a multitude of additives and this experiment does not lead a person of ordinary skill to select components to achieve these properties. Nothing in this disclosed experiment nor the specification elucidates how solvents are selected to achieve these weight loss values across the scope of these claims.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of written description and nonobviousness fails to outweigh the evidence of lack of written description and obviousness.
Response to Arguments
With respect to rejoinder, as the claims are not in condition for allowance, rejoinder is not ripe for review.
With respect to the 112(b) rejections, applicant’s amendments have cured the previous issues. However, see new 112(b) rejection with respect to new claim 14 above.
With respect to the 112(a) rejections, applicant argues that examiner has not met the burden of showing that the instant disclosure is enabled for the recited combination of features (Applicant’s remarks, pg. 9, last two paragraphs – pg. 10 1st two paragraphs). Applicant argues that the examiner has not pointed to any acceptable evidence or reasoning suggesting that these would not have been accepted in the field as sufficient direction with respect to the subject matter (Applicant’s remarks, pg. 11, 1st paragraph).
However, the rejection noted that the data provided in the specification relies upon a proprietary solvent that does not have a publicly available composition and that compositions that fit within original claims 3 and 4 do not necessarily produce the claimed properties. As such, the disclosure does not provide guidance leading a person of ordinary skill to be capable of achieving the claimed properties across the full scope of the claims.
Applicant also argues that the additional experimental data in the Declaration further shows that the invention can be practiced without using the proprietary solvent in the specification’s examples (Applicant’s remarks, pg. 10, last paragraph). However, the Declaration is addressed above.
Finally applicant argues that given the high level of one of ordinary skill in the area and the state of the prior art, the guidance in the specification is sufficient and would not have been undue experimentation to practice the claimed invention (Applicant’s remarks, pg. 11, 2nd paragraph).
However, the specification does not provide guidance on how to select components of the paste to achieve these properties. The specific examples provided in the specification all use a proprietary solvent where the composition is unclear, and the singular data point provided in the Declaration with a singular solvent, additive, and particle size does not show that this guidance was in the specification as filed. Thus, when considering the evidence as a whole, applicant has not provided a sufficient description and enabled the full scope of the claims. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Applicant’s arguments, see pg., filed 6/8/26, with respect to the rejection(s) of claim(s) 1-4 and 8-9 under 35 USC 102 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 Nakajo.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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