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 .
Claim Interpretation
Claim 11: traditional pigment particles will be interpreted as titanium dioxide (TiO2) particles [see instant specification 0137; INK01-03].
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 3, 5-6 and 16-17 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.
The term “high-power” in claim 3 is a relative term which renders the claim indefinite. The term “high-power” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of the claim is unclear because there is no certainty with respect to what qualifies as high-power and what would fail to qualify as high-power. What degree of power is necessary in order to qualify under the relative term as "high" power? What degree of power would fall outside the scope of the claim? How does one having ordinary skill in the art avoid infringement of Claim 3 by employing an ultrasonication machine that does not have high power? The metes and bounds of this claim limitation cannot be readily ascertained.
The term “high pressure” in claim 3 is a relative term which renders the claim indefinite. The term “high pressure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of the claim is unclear because there is no certainty with respect to what qualifies as high pressure and what would fail to qualify as high pressure. What degree of pressure is necessary in order to qualify under the relative term as "high" pressure? What degree of pressure would fall outside the scope of the claim? How does one having ordinary skill in the art avoid infringement of Claim 3 by employing an microfluidizer homogenizer that does not have high pressure? The metes and bounds of this claim limitation cannot be readily ascertained.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation surface anchoring agents comprise a vinyl group and an acid group, and the claim also recites vinylacetic acid, acrylic acid, methacrylic acid, vinyltrimethoxysilane, vinyltriacetoxysilane, γ-methacryloxypropyltrimethoxysilane, 4-vinylbenzoic acid which is the narrower statement of the range/limitation. In the present instance, claim 6 recites the broad recitation inorganic particles are bare inorganic particles, surface-modified inorganic particles, and the claim also recites titanium dioxide, surface-modified titanium dioxide which is the narrower statement of the range/limitation. In the present instance, claim 16 recites the broad recitation ketones, alcohols, esters, and the claim also recites methyl ethyl ketone, ethyl acetate and ethanol which is the narrower statement of the range/limitation. In the present instance, claim 17 recites the broad recitation about 50% to about 85% by weight, and the claim also recites about 65% to about 80% by weight which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
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.
Claim(s) 1-6 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, T.; Colver, P. J.; Bon, S. A. F. Adv. Mater. 2007, 19, 2286 in view of Bismarck et al. (US 2010/0261803).
Regarding claims 1-3, 5-6 and 8: Chen et al. (Adv. Mater. 2007, 19, 2286) discloses a method of making hollow spheres from TiO2-stabilized Pickering emulsions [Scheme 1; §Experimental], wherein 0.5 g TiO2 nanoparticles (average particle size: 200 nm) were dispersed in 50 ml water using a digital sonifier. 0.5 g V-65 (2,2’azois(2,4-dimethyl valeronitrile)) was dissolved in 1.0 g styrene, 1.5g divinylbenzene (DVB), and 1.5 g n-hexadecane, and mixed with the TiO2 dispersion. A stable Pickering emulsion was generated by agitation, heated to 51 oC and polymerized. The resulting microspheres were isolated by filtration and dried to afford hollow microsphere having a TiO2 surface on the poly(styrene-co-divinylbenzene) shell [§Experimental; Scheme 1] and have a size of 20-50 µm [pg. 228; Fig. 2].
Chen et al. (Adv. Mater. 2007, 19, 2286) does not disclose adding a silane to the TiO2 dispersion. However, Bismarck et al. (US ‘803) discloses Pickering emulsions [0002; 0052; 0082], wherein TiO2 nanoparticles [0017; 0021; 0023; 0081] are treated with an acryl-functionalized silane of formula (I), such as methacryloxypropyltrimethoxysilane (MPS), to afford a coated particle [0025-0028]. Chen et al. (Adv. Mater. 2007, 19, 2286) and Bismarck et al. (US ‘803) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of Pickering emulsions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined TiO2 nanoparticles treated with an acryl-functionalized silane of formula (I) (ex. MPS) prior to forming the emulsion, as taught by Bismarck et al. (US ‘803) in the invention of Chen et al. (Adv. Mater. 2007, 19, 2286), and would have been motivated to do so since Bismarck et al. (US ‘803) suggests TiO2 nanoparticles treated with an acryl-functionalized silane of formula (I) (ex. MPS) enables the wettability of the particle to be modified [0015; 0023], and increases the strength of the polymer network [0029].
Regarding claim 4: Chen et al. (Adv. Mater. 2007, 19, 2286) and Bismarck et al. (US ‘803) disclose the basic claimed method [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the one or more surface anchoring agents prevent desorption of inorganic particles from the oil droplets or the crosslinked polymer shell, would implicitly be achieved, as “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].
Regarding claim 9: Chen et al. (Adv. Mater. 2007, 19, 2286) discloses lowering the amount of the oil phase results in smaller structures [pg. 2289].
Chen et al. (Adv. Mater. 2007, 19, 2286) does not specifically disclose the hollow spheres having a diameter of about 1,000 nm. However, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Claim(s) 7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, T.; Colver, P. J.; Bon, S. A. F. Adv. Mater. 2007, 19, 2286 in view of Bismarck et al. (US 2010/0261803) as applied to claim 1 above, and further in view of Huo, J.; Marcello, M.; Garai, A.; Bradshaw, D. Adv. Mater. 2013, 25, 2717.
Regarding claims 7 and 10: Chen et al. (Adv. Mater. 2007, 19, 2286) and Bismarck et al. (US ‘803) disclose the basic claimed method [as set forth above with respect to claim 1]; wherein Chen et al. (Adv. Mater. 2007, 19, 2286) discloses the hollow spheres may be used as carriers for drug release systems [pg. 2286; pg. 2289].
Chen et al. (Adv. Mater. 2007, 19, 2286) does not disclose an oil soluble dye in the oil phase (monomer mixture). However, Huo et al. (Adv. Mater. 2013, 25, 2717) discloses microcapsules prepared from Pickering emulsions [Scheme 1], wherein a dye (oil red O (ORO)) is loaded into the oil phase (dodecane) before mixing with monomers followed by microcapsule formation [Fig. 4; pg. 2720; §Supporting Information]. Chen et al. (Adv. Mater. 2007, 19, 2286) and Huo et al. (Adv. Mater. 2013, 25, 2717) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of hollow microcapsules by Pickering emulsions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined loading a dye into the oil phase prior to microcapsule formation, as taught by Huo et al. (Adv. Mater. 2013, 25, 2717) in the invention of Chen et al. (Adv. Mater. 2007, 19, 2286), and would have been motivated to do so since Huo et al. (Adv. Mater. 2013, 25, 2717) suggests dye molecules as probes to evaluate shell permeability for use in controlled release of active molecules from the capsule interior [pg. 2717; pg. 2720-2721; Fig. 4].
Claim(s) 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, T.; Colver, P. J.; Bon, S. A. F. Adv. Mater. 2007, 19, 2286 in view of Bismarck et al. (US 2010/0261803) as applied to claim 1 above, and further in view of Loria et al. (US 4,880,465).
Regarding claims 11-12, 14-16 and 18-19: Chen et al. (Adv. Mater. 2007, 19, 2286) and Bismarck et al. (US ‘803) disclose the basic claimed method [as set forth above with respect to claim 1].
Chen et al. (Adv. Mater. 2007, 19, 2286) does not disclose an inkjet ink. However, Loria et al. (US ‘465) discloses ink jet inks containing hollow microspheres [abstract], wherein Ex. 3 [Ex. 3; 5:46-68] contains 31 wt% hollow microspheres (OP-42), 35.4 wt% DI water, 2.7 wt% ammonia, 2.7 wt% Carbitol (coalescent agent [5:5-9]), 13.3 wt% Joncryl 52 (styrene-acrylic acid copolymer [4:25-41]), 4.9 wt% isopropanol, and 10 wt% glycerol [Ex. 3; 5:46-68]. Chen et al. (Adv. Mater. 2007, 19, 2286) and Loria et al. (US ‘465) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of hollow microspheres. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared an inkjet ink containing hollow microspheres (TiO2 surface on the poly(styrene-co-divinylbenzene) shell) and the inkjet formulation, as taught by Loria et al. (US ‘465) in the invention of Chen et al. (Adv. Mater. 2007, 19, 2286), and would have been motivated to do so since Loria et al. (US ‘465) suggests white inks containing hollow microspheres affords consistently uniform print quality [3:5-12].
Regarding claim 13: Chen et al. (Adv. Mater. 2007, 19, 2286) discloses lowering the amount of the oil phase results in smaller structures [pg. 2289].
Chen et al. (Adv. Mater. 2007, 19, 2286) does not specifically disclose the hollow spheres having a diameter of about 1,000 nm. However, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 17: Chen et al. (Adv. Mater. 2007, 19, 2286), Bismarck et al. (US ‘803) and Loria et al. (US ‘465) disclose the basic claimed ink composition [as set forth above with respect to claim 11]; wherein Loria et al. (US ‘465) discloses 50.3 wt% water miscible solvents (35.4 wt% DI water, 4.9 wt% isopropanol and 10 wt% glycerol) [Ex. 3; 4:50-59; 5:46-68].
Regarding claim 20: Chen et al. (Adv. Mater. 2007, 19, 2286), Bismarck et al. (US ‘803) and Loria et al. (US ‘465) disclose the basic claimed ink composition [as set forth above with respect to claim 11]; wherein Loria et al. (US ‘465) discloses the ink can contain defoaming agents and plasticizers [5:10-16].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767