DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of claims 6-9 in the reply filed on 02/03/2025 is acknowledged. The traversal is on the ground(s) that the subject matter is sufficiently related and that the search and examination of the entire application could be made without serious burden. This is not found persuasive because the requirement for restriction is based on lack of unity of invention since the technical feature is not a special feature as it does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-5 and 10-23 are withdrawn from consideration.
Specification
The disclosure is objected to because of the following informalities:
lines 26-27 on page 26 recite: “the number of particles having a steric structure S to the total number of particles T”, however in claim 9 “the number of particles having a steric structure is taken as T and the total number of particles is taken as S”.
Appropriate correction is required.
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.
Claims 6-9 are 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 6, claim 6 in lines 7-8 on page 4, recites “a ratio of the number of the particles counting from a side on which a particle size is small”. The claim is rendered indefinite, because it is unclear what the statement “counting from a side on which a particle size is small” is referring to.
Claim 6 in lines 8-9 and lines 11-13 on page 4 recites “([the number of particles counting from the side on which the particle size is small] / [a total number of particles])”. The claim is rendered indefinite because it is unclear if the limitations in parenthesis are required by the claim or merely exemplary.
Furthermore, claim 6 defines [A] is a ratio ([the number of particles counting from the side on which the particle size is small] / [a total number of particles]) being more than 0 and 1/10 or less, [B] is defined as a ratio [the number of particles counting from the side on which the particle size is small] / [the total number of particles]) being more than 9/10 and 10/10 or less; and [B]/[A] is set forth to be 1.2 or more. However, based on the numerical limitations of [A] and [B], [B]/[A] would be at least 9, thus, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Please note, claims 7-9 are rendered indefinite as a result of their dependency on claim 6.
Regarding claim 8, claim 8 in lines 6-7 on page 4 recites “([the number of particles having a degree of shape irregularity of 1.2 or more] / [the total number of particles])”. The claim is rendered indefinite because it is unclear if the limitations in parenthesis are required by the claim or merely exemplary.
Claim 9 recites the limitation "the number of particles having a steric structure" in line 1 on page 5. There is insufficient antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 is dependent upon claim 6, and in line 2 recites “wherein the [A] value is 1.13 or more”. However claim 6 defines [A] as a ratio ([the number of particles counting from the side on which the particle size is small] / [a total number of particles]) being more than 0 and 1/10 or less, and thus, failing to further limit [A] value being between 0 and 0.1 as set forth in claim 6. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
For the purpose of examination, the examiner interprets limitation [A] as referring to an Average Degree of Shape Irregularity according to Specification, paragraph [0058], (2-3).
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 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (JP 2011104694 A) with reference to the provided machine translation, hereinafter referred to as NAKAYAMA.
Regarding claim 6, NAKAYAMA teaches a dispersion of irregularly shaped silica-based fine particles (paragraphs [16]: the inorganic oxide particle dispersion; and [13]: the inorganic oxide fine particles are silica fine particles) comprising irregularly shaped silica-based fine particles (paragraph [16]: irregularly shaped (non-spherical) inorganic oxide fine particles) that satisfy conditions [1] to [4] below:
Condition [1]: an average particle size by a dynamic light scattering method id in a range of 10nm to 300 nm (paragraph [10]: inorganic oxide fine particles having an average particle diameter measured by a dynamic light scattering method of 3 to 300 nm). NAKAYAMA teaches a range which overlaps and renders obvious the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim. See MPEP §2144.05(I);
Condition [2]: an average particle size in terms of nitrogen adsorption method is in the range of 5 nm to 200 nm (paragraph [28]: since the specific surface area of the inorganic oxide fine particle used by this invention exists in the range of 10-800 m2/g normally, it is calculated with the range of 3-300 nm). NAKAYAMA teaches a range which overlaps and renders obvious the claimed range.
Condition [3]: an average degree of shape irregularity is in a range of 1.2 to 20 (paragraph [29]: the average irregularity of the inorganic oxide fine particles is preferably in the range of 1.5 to 2.2). NAKAYAMA teaches a range which is within the claimed range.
NAKAYAMA discloses that the inorganic oxide fine particles dispersion can be prepared by a method of growing seed particles after preparing a seed particle dispersion (paragraph [34]). NAKAYAMA teaches that a method for producing a seed particle dispersion is known, for example, a silica-based seed particle dispersion can be obtained by the method comprising the following steps: maintaining an acidic silicic acid solution (silica concentration of 1 to 7% by mass) at 20 to 98°C, pH: 4 to 11, adding alkali; after holding at 30-98°C for 1-3 hours, adjusting the pH to 9-11 by adding alkali, raising the temperature to 40-98°C, holding for 1-3 hours, and then cooling. Also, a known silica sol can be applied to the seed particle dispersion; silica sol can be obtained by peptizing silica hydrogel obtained by neutralizing silicate with acid (paragraph [34]).
Since the method for preparing the irregular silica particles disclosed by NAKAYAMA is similar to the method disclosed by the Applicant (Specification, paragraph [0007]), one of ordinary skill in the art would have anticipated the silica-based fine particles of NAKAYAMA to satisfy Conditions [1]-[4] as set forth in claim 6, such as an average degree of shape irregularity determined through analysis of a scanning electron micrograph is in a range of 1.2 to 10, and in a particle size distribution determined through analysis of a scanning electron micrograph, provided that an average degree of shape irregularity of particles in a range where a ratio of the number of the particles counting from a side on which a particle size is small ([the number of particles counting from the side on which the particle size is small] / [a total number of particles]) is more than 0 and 1/10 or less is taken as [A], and an average degree of shape irregularity of particles in a range where the ratio of the number of the particles counting from the side on which the particle size is small ([the number of particles counting from the side on which the particle size is small] / [the total number of particles]) is more than 9/10 and 10/10 or less is taken as [B], a [B]/[A] value is 1.2 or more.
Regarding claim 7, NAKAYAMA teaches the dispersion of irregularly shaped silica-based fine particles according to claim 6, wherein the [A] value is 1.13 or more in the condition [4] (paragraph [29]: the average irregularity of the inorganic oxide fine particles is preferably in the range of 1.5 to 2.2). NAKAYAMA teaches a range which overlaps and renders obvious the claimed range.
Regarding claim 8, NAKAYAMA teaches the dispersion of irregularly shaped silica-based fine particles according to claim 6. Since the method for preparing the irregular silica particles disclosed by NAKAYAMA is similar to the method disclosed by the Applicant (Specification, paragraph [0007]), one of ordinary skill in the art would have anticipated the silica-based fine particles of NAKAYAMA to satisfy Condition [5] as set forth in claim 8, such as in a case where a degree of shape irregularity of particles is determined through analysis of a scanning electron micrograph, a ratio of irregularly shaped particles to all particles ([the number of particles having a degree of shape irregularity of 1.2 or more]/[the total number of particles] x 100%) is 45% or more.
Additionally, NAKAYAMA discloses that the number of inorganic oxide fine particles having a short diameter/long diameter ratio determined by an electron microscope in the range of 0.3 to 0.8 is in the range of 20 to 45% of the total number of inorganic oxide fine particles. 2); the number of inorganic oxide fine particles having a short diameter / major diameter ratio of 0.5 or less determined by an electron microscope is 10% or less of the total number of inorganic oxide fine particles (paragraph [10]). Thus, one of ordinary skill in the art would have recognized that NAKAYAMA discloses the dispersion comprising up to 55% of irregularly shaped silica-based particles.
Regarding claim 9, NAKAYAMA teaches the dispersion of irregularly shaped silica-based fine particles according to claim 6, wherein the irregularly shaped silica-based fine particles satisfy a condition [6] below,
Condition [6]: provided that the number of particles having a steric structure is taken as T and the total number of particles is taken as S through analysis of a scanning electron micrograph, a steric structure ratio (T/S x 100%) is 10% or more (paragraph [10]: the number of inorganic oxide fine particles having a short diameter/long diameter ratio determined by an electron microscope in the range of 0.3 to 0.8 is in the range of 20 to 45% of the total number of inorganic oxide fine particles).
It is noted that for the purpose of claim interpretation, the examiner treats the limitation “ particles having steric structure” as referring to the irregularly shaped particles such as having a short diameter/long diameter ratio determined by an electron microscope in the range of 0.3 to 0.8 as disclosed by NAKAYAMA.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANASTASIA KUVAYSKAYA whose telephone number is (703)756-5437. The examiner can normally be reached Monday-Thursday 7:30am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A.K./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731