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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group IV, claim 15-21 in the reply filed on 11/07/2025 is acknowledged.
The traversal is on the ground(s) that the amendment to claim 1, filed 11/07/2025, now recites in claim 1 “the nanoparticles are prepared according to the process of claim 15”. Applicant argues that searching the method would not pose an undue burden or require additional search.
This is not found persuasive because the elected invention, claims 15-21, are drawn to a process for obtaining niobium nanoparticles, while group I, claims 1-12, are drawn to a preparation of nanoparticles (i.e. a product). The amendment to claim 1 can be interpreted as a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Accordingly, the search for a process and product are not equivalent and a search burden exists.
Furthermore, a lack of unity remains between groups I-IV, as cited in the restriction requirement filed 09/15/2025, as the groups require “preparing nanoparticles comprising niobium” which is shown to not be a special technical feature in view of the prior art Kitchell et al. (US20030057304A1). Unity is assessed across all of the inventive groups, not in a piecemeal fashion.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Regarding claim 15, lines 1 and 3, the terms “niobium nanoparticles” and “niobium particles” are interpreted according to the definition provided in the instant specification in [0071] that defines “niobium particles” as encompassing “various chemical entities containing Niobium, including Niobium metal, oxides, hydrates, hydrides, carbides, or nitrides of Niobium, Niobium iron or Niobium bonded to other metals or transition metals, or combinations thereof. It also includes Niobium Pentoxide.” It is noted that every working example (see Example 1-9, [0114]-[0167]) describes exclusively niobium pentoxide (Nb2O5) however in the interest of compact prosecution, the term “niobium particles” was interpreted broadly in accord with the definition in [0071] of the instant specification. The term “niobium nanoparticles” in the preamble was interpreted to be particles resulting from performing the process on “niobium particles” as defined above.
Claim Objections
Claims 15-21 are objected to because of the following informalities:
Regarding claim 15, line 3, the term “Niobium” does not require capitalization and should read “niobium”.
Regarding claim 15, par. 3, the high-energy mill conditions do not use consistent verb tense in the claim language. For example the first line states “suspend particles to be comminuted in a liquid” while the final lines states “grinding the particles at a temperature below 60 °C”.
Regarding claims 15 and 21, the term “steammill” is likely intended to be “steam mill”.
Regarding claims 15, 19, and 21, there should be a space between the temperature and the °C symbol. For example, in line 13, the phrase “60°C” should read “60 °C”. Similar changes are required in claim 19 and 21.
Regarding claim 16, last line, the phrase “or add surfactants” is likely intended to read “or adding surfactants”.
Regarding claim 20, lines 3-4, the terms “Zirconia,” “Silicon carbide,” “Yttria,” and “Niobium Pentoxide” do not require capitalization and should read “zirconia,” “silicon carbide,” “yttria,” and “niobium pentoxide”.
Regarding claim 20, line 2-3, the phrase “selected from: zirconia, silicon carbide, alumina, said spheres being…” is likely intended to read “selected from: zirconia, silicon carbide, and alumina, said spheres being…”
Claims 16-21 all depend from claim 15 and thus are also objected to.
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 15-21 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.
Claim 15, final line, the term “the desired granulometric profile” lacks antecedent basis and is unclear. In the interest of compact prosecution and in view of the instant specification, the term was interpreted as nanoparticles being the desired particle size, or “granulometric profile”. See at least [0041] in the instant specification.
Claim 16, lines 3-4 recite the limitations “the polar liquid medium” and "”the non-polar liquid medium". There is insufficient antecedent basis for these limitations in the claim, as claim 15 from which claim 16 depends, only cites “a liquid”.
Claim 16, line 3, the phrase “the range from 2 to 13” lacks antecedent basis and is unclear.
Claim 18, line 2, the phrase “is performed in a ball mill, disk mill, or high-energy mill or in a jet mill” is unclear. It is unclear if the terms before the “or” are optional, additional, or alternative to the pre-comminution being performed in a jet mill. In the interest of compact prosecution and in view of the instant specification, the phrase was interpreted such that pre-comminution could be performed with any of the claimed milling techniques (i.e. ball mill, disk mill, high-energy mill, or jet mill).
Claims 16-21 depend from claim 15 and thus are also rejected.
Appropriate correction is required.
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 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 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (US20120107224A1) in view of Isaka et al. (JP4996016B2 English), with evidentiary support provided by USGS pH Scale (2019) and as outlined in the rejection of claims 15, 16, and 19.
Regarding claim 15, Reed teaches a process for producing niobium powders, comprising niobium metal, niobium oxide, and niobium suboxides, by high-energy ball milling in order to provide niobium particles within the sub-micron (i.e. nanoparticle) to micron range (Abstract; [0040]; [0072]; [0084]; [0088]). Claim 1 describes two options for the comminution conditions, selected from high-energy milling or jet milling. Reed teaching milling with a high-energy mill meets the “high-energy mill” option.
Reed further teaches the milling treatment is a wet process performed in water where niobium powder and water are mixed prior to adding milling media with a size ranging from 3/16” to 1/32” (i.e. 4.76 mm to 0.79 mm) and milling at 350 rpm or higher ([0076]-[0077]; [0087]-[0088]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Reed (milling media 0.79 mm to 4.76 mm; milling speed 350 rpm or higher) overlaps with the claimed ranges (5 µm to 1.3 mm grinding balls; rotation speed 500 to 4500 rpm). Therefore, the ranges in Reed render obvious the claimed ranges.
Reed teaching the milling occurs in water is considered to meet the limitation “stabilize the suspension until obtaining a stable colloidal suspension”. This conclusion is based on [0051] of the instant specification and claim 16 that describe stabilization of the colloidal suspension as requiring adjusting the pH of the polar liquid medium to the range from 2 to 13. Water is known to have a pH of 7, as evidenced by USGS pH Scale (Pg. 1), and accordingly the teaching of Reed of a mixture of niobium particles and water meets this criteria and would provide a stable colloidal suspension with a pH within the range of 2 to 13. See MPEP 2112.II.
Reed further teaches the milling operations can be performed multiple times to arrive at powders with the desired granules size and that the particles can be sub-micron in size ([0072]; [0074]; [0082]-[0084]; [0088]), meeting the limitation of “comminuting the particles until obtaining the desired granulometric profile”. A “granulometric profile” is interpreted as providing niobium particles in the nanometer range (see Claim 15; [0003]), which is taught by Reed.
The claim further requires the method “suspend particles to be comminuted in a liquid, in a concentration between 1 % and 90% m/m” and “grinding the particles at a temperature below 60C” to which Reed is silent.
Isaka teaches a method of preparing a niobium oxide powder slurry that can be used to prepared niobium powders where the slurry is mixed in a mixing ratio of 65 mL-1900 mL per 100 g of niobium oxide powder, where the liquid medium is water (Claims; Abstract; [0006]-[0008]; [0019]). The claimed range of “1% to 90% m/m” is interpreted as a mass percent ratio of niobium to water based on the Examples 1-9 in the instant specification ([0114]-[0167]). Put in terms of the claim, Isaka teaches a ratio from 5.26% to 153% m/m (e.g. 100* (100 g/65 mL) = 153%). Isaka further teaches a pulverization step of the slurry is performed at a temperature higher than 5 °C and lower than 70 °C ([0019]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Isaka (slurry mixture from 5.26% to 153% m/m; temperature higher than 5 °C and lower than 70 °C) overlaps with the claimed ranges (between 1% to 90% m/m; griding at temperatures below 60 °C). Therefore, the ranges in Isaka render obvious the claimed ranges.
Advantageously, performing pulverization within the mixing ratio and temperatures taught by Isaka avoids high viscosity mixtures which make pulverization become too difficult while providing slurries with good fluidity that are easy to sinter and provide fine particles with sharp particle distributions ([0019]; [0047]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide a slurry concentration from 5.26% to 153% m/m and perform pulverization at temperatures higher than 5 °C and lower than 70 °C in the process of Reed in order to avoid high viscosity mixtures and provide slurries with good fluidity that in turn are easy to sinter and provides fine particles with sharp particle distributions, as taught by Isaka.
Regarding claim 16, Reed teaching the milling occurs in water is considered to meet the limitation “stabilize the suspension until obtaining a stable colloidal suspension”. This conclusion is based on [0051] of the instant specification and claim 16 that describe stabilization of the colloidal suspension as requiring adjusting the pH of the polar liquid medium to the range from 2 to 13. Water is known to have a pH of 7, as evidenced by USGS pH Scale (Pg. 1), and accordingly the teaching of Reed of a mixture of niobium particles and water meets this criteria and would provide a stable colloidal suspension. See MPEP 2112.II.
Regarding claim 17, Reed teaches the niobium feedstock material can be subjected to crushing and milling to produce a powder with a size of about 5 to 425 microns ([0079]-[0080]; [0082]). Reed teaches the first milling process of the niobium feedstock can be conducted with ball milling ([0087]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Reed (5 to 425 microns) overlaps with the claimed range (mean particle size of less than 40 micrometers). Therefore, the range in Reed renders obvious the claimed range.
Regarding claim 18, Reed teaches the first milling process of the niobium feedstock can be conducted with ball milling ([0087]).
Regarding claim 19, Reed teaches the process for producing niobium powders comprises mixing niobium feedstock, comprising niobium pentoxide, with a particle size of about 5 to 425 microns in a high-energy mill, adding water, adding milling media with a ball size ranging from 3/16” to 1/32” (i.e. 4.76 mm to 0.79 mm) and milling at 350 rpm or higher in order to provide niobium particles within the sub-micron (i.e. nanoparticle) to micron range (Abstract; [0040]; [0072]; [0079]-[0080]; [0082]; [0084]; [0088]; [0207]). Reed further teaches the milling operations can be performed multiple times to arrive at powders with the desired granules size in the sub-micron range ([0072]; [0074]; [0082]-[0084]; [0088]), meeting the limitation of “comminuting the particles until obtaining the desired granulometric profile”. Water is known to have a pH of 7, as evidenced by USGS pH Scale (Pg. 1), and accordingly the teaching of Reed overlaps the claimed pH 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. MPEP 2144.05 (I). In the instant case, the ranges taught by Reed (5 to 425 microns niobium feedstock comprising niobium pentoxide; pH of 7; milling balls 3/16” to 1/32” (i.e. 4.76 mm to 0.79 mm; pH of about 7 milling at 350 rpm or higher) overlaps with the claimed ranges (micrometric niobium pentoxide particles; pH from 5 to 10; mill balls between 50 µm to 400 µm; rotation speed 2000 to 4000 rpm). Therefore, the ranges in Reed render obvious the claimed ranges.
The claim further requires “grinding the particles at a temperature below 60 °C” to which Reed is silent.
Isaka teaches a method of preparing a niobium oxide powder slurry that can be used to prepared niobium powders where the slurry is mixed with water and pulverized (Claims; Abstract; [0006]-[0008]; [0019]). Isaka further teaches the pulverization step of the slurry is performed at a temperature higher than 5 °C and lower than 70 °C ([0019]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Isaka (temperature higher than 5 °C and lower than 70 °C) overlaps with the claimed range (grinding at temperatures below 60 °C). Therefore, the range in Isaka renders obvious the claimed range.
Advantageously, performing pulverization within the temperatures taught by Isaka avoids high viscosity mixtures which make pulverization become too difficult while providing slurries with good fluidity that are easy to sinter and provide fine particles with sharp particle distributions ([0019]; [0047]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform pulverization at temperatures higher than 5 °C and lower than 70 °C in the process of Reed in order to avoid high viscosity mixtures and provide slurries with good fluidity that in turn are easy to sinter and provide fine particles with sharp particle distributions, as taught by Isaka.
Regarding claim 20, Reed teaches the high-energy milling is performed with agitation with milling balls of varying ball diameters ([0088]).
The claim further requires “said spheres are selected from zirconia, silicon carbide, alumina, said spheres being optionally stabilized with yttria or niobium pentoxide, or combinations thereof,” to which Reed is silent. Reed teaches using niobium balls ([0088]).
Isaka teaches a process of ball milling a slurry of niobium oxide in water with a ball mill where the balls are made of zirconia (Abstract; [0023]).
Advantageously, zirconia is high density, provides a high grinding efficiency, and transfers less contamination ([0023]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use zirconia milling balls in the process of Reed in order to provide a high density material with high grinding efficiency that transfers less contamination, as taught by Isaka.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (US20120107224A1) in view of Isaka et al. (JP4996016B2 English), with evidentiary support provided by USGS pH Scale (2019) and as outlined in the rejection of claim 15, and further in view of Bludsuss et al. (CA2018346A1), Nied et al. (US8074907) and Benz et al. (Int. J. Miner. Process. 1996, 44-45, 507-519).
Regarding claim 21, Reed in view of Isaka teaches the process of claim 15 and the claim further requires “wherein the jet mill at superheated temperature or steam mill is adjusted with the following parameters: rotation of the air classifier at 20,000 rpm; compressed steam pressure at 50 bar; and temperature of the superheated fluid of 280°C” to which Reed and Isaka are silent.
Bludsuss teaches a method of obtaining niobium oxide powder that includes fine grinding of the material that is carried out in a jet mill (Abstract; Claim 10; Pg. 5, lines 5-19).
Advantageously, performing the process of Bludsuss, including jet milling, provides niobium oxide powders that have a narrow particle size distribution, a large specific surface area, and a very high degree of purity (Pg. 2, lines 23-29).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform jet milling in the process of Reed in order to provide a powder with a narrow particle size distribution, large specific surface area, and very high degree of purity, as taught by Bludsuss.
The claim further requires the jet milling is performed “with the following parameters: rotation of the air classifier at 20,000 rpm; compressed steam pressure at 50 bar; and temperature of the superheated fluid of 280°C” to which Reed, Isaka, and Bludsuss are silent.
Nied teaches a method of generating fine particles by jet milling where the process comprises a classifying wheel and superheated steam, where the superheated steam has a pressure of at least approximately 40 bar and a temperature of 200 to 800 °C (Abstract; col. 2, lines 52-59; col. 6, lines 1-10). The term “the superheated fluid” is interpreted as steam present in the “jet mill at superheated temperature” and accordingly steam is considered to teach the limitation of “the superheated fluid”. See at least [0053] in the instant specification. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Nied (pressure at least 40 bar; temperature 200 to 800 °C) overlaps with the claimed ranges (pressure at 50 bar; temperature of superheated fluid of 280 °C). Therefore, the ranges in Nied render obvious the claimed ranges.
Advantageously, jet milling under the conditions taught by Nied provides very fine particles that are dried in the process (col. 3, lines 59-67; col. 5, line 61-col.6, line 9; col. 9, lines 20-38).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform jet milling with superheated steam at a pressure of at least approximately 40 bar and a temperature of 200 to 800 °C in the process of Reed in order to provide very fine powders that are dried in the process, as taught by Nied.
The claim further requires the jet milling classifier is operated with “rotation of the air classifier at 20,000 rpm” to which Reed, Isaka, Bludsuss, and Nied are silent.
Benz teaches a process of performing jet milling on hard materials where the classifier wheel was run between 2,000 to 22,000 rpm (Abstract; Pg. 509, 4. Experimental approach). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Benz (2,000 to 22,000 rpm) overlaps with the claimed range (20,000 rpm). Therefore, the range in Benz renders obvious the claimed range.
Advantageously, operating the jet mill classifier at high speeds tends to lead to narrow distribution of particle sizes and can allow for flexibility in the grinding pressure which can alleviate operational costs (Pg. 515, par. 2; Pg. 518, 7. Summary).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to perform jet milling with a classifier operating between 2,000 to 22,000 rpm in the process of Reed in order to provide particles with narrow distributions and allow for flexibility in grind pressures that can reduce operational costs of the mill, as taught by Benz.
Conclusion
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/JORDAN W TAYLOR/Examiner, Art Unit 1738