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 .
Response to Amendment
Applicant' s claim amendments and remarks filed August 27, 2026 are entered and have
been fully considered. Applicant incorporated previously indicated allowable subject into the independent claim, but upon further search and consideration, a new ground for rejection has been applied and the previous rejections withdrawn.
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.
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, 4-8, are rejected under 35 U.S.C. 103 as being unpatentable over Akimoto et al, US20130337161A1 in view of the chapter, “Effects of Surface Modification on Polymeric Biocomposites for Orthopedic Applications,” by Harmata et al, found in Nanocomposites for Musculoskeletal Tissue Regeneration, chapter 3, pages 67-91, 2016.
Regarding claims 1-2, 6-7, 10-11, Akimoto teaches an organic-inorganic composite including an inorganic particle and a polymer bonded to the particle, abstract. The inorganic particle is preferably selected as a spherical hollow silica particle, ¶[0102], and Akimoto exemplifies hollow silica particles in the examples with average diameters of 48 nm and 64 nm, ¶¶[0567-0571]. The inorganic particle is surface treated with a coupling agent that bonds to the inorganic particle ¶¶[0108-0109] and links the particle surface to the organic polymer, ¶[0108]. The exemplified coupling agents for treating the particle surface are silanes and include 3-(2-bromoisobutyloxy) propyldimethylchlorosilane, 3-(2-bromoisobutyryl)propyl) dimethylethoxysilane, and 1,1,1,3,3,3-hexamethyldisilazane ¶¶[0590-0594] which put alkyl groups on the silica particles and reads on claim 7.
The polymer in the organic-inorganic composite is composed of various radically polymerizable monomer units exemplified as methyl methacrylate, glycidyl (meth)acrylate, methacrylic acid 2,2,2-trifluoroethyl, Methacrylic acid 2-hydroxyethyl, ¶¶[0603-0614]. The number average molecular weight of the polymer is preferably 10,000-100,000 g/mol, with a molecular weight distribution of 1 to 2.3, ¶[0157], which puts the weight average molecular weight as the same range for a PDI of 1 or up to a range of 23,000-230,000 g/mol for a PDI of 2.3. In example 3, ¶¶[0719-0722] the BPS treated 50 nm hollow silica is grafted to a copolymer of TFEMA and HEMA where the Mw of the polymer is 21,900 g/mol and in example 9 ¶[0748] the BPS treated 50 nm hollow silica particles are grafted onto a polymer made from glycidyl methacrylate GMA, it states it was made with the same method as example 6, and the polymer made from the GMA has a Mn of 10,900 g/mol and a Mw/Mn of 1.38, so the Mw is 15,042 g/mol ¶[0737], both of which fall within the claimed range for the molecular weight of the thermosetting resin and also read on the thermosetting functional groups of claim 2.
The coating composition containing the inorganic-organic composite further comprises crosslinkers ¶¶[0249, 0451] and one of the exemplified crosslinkers in the examples is (3',4'-epoxycyclohexane)methyl 3,4-epoxycyclohexane carboxylate ¶[0651] Celoxide 2021P, which reads on the monomer of claim 1 and the alicyclic epoxy of claims 10 and 11, where it matches the structure of chemical formula 1.
Akimoto does not teach the thickness of the surface treated layer on the hollow silica is between 3-50 nm.
Harmata discloses that silane treatment is one of the most prominent techniques for surface modification of particles and illustrates the silane coupling agent grafting onto a filler particles surface, page 70, 3.3.1. It is also disclosed that to ensure uniform coverage, multiple layers of silane are needed with an inorganic surface typically <5nm thick, top of page 71, which overlaps with the claimed range. Silane treatment provides many applications such as a coupling or dispersal agent or an adhesion promoter, page 71 section 3.3.1.2. It is further explained that surface modification of filler particles controls the surface properties which affects both the mechanical and physical properties of the resulting polymer composite, page 84, section 3.6 first sentence. And that surface modification improves the interaction between the filler surface and the polymer binder, 3.6 second paragraph.
Akimoto is analogous to the claimed invention because it is in the field of coating compositions for optical articles comprising similar ingredients.
Harmata is analogous to the claimed invention because it is in the field of surface treatment of filler particles for use in polymer-filler composites.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Akimoto but applying the surface treatment to the hollow silica in a thickness of 5 nm or less because it would produce the predictable result of a surface treated hollow particle with uniform treatment coverage which improves the interaction between the particles and polymer binder, as disclosed by Harmata.
Regarding claims 4-5, Akimoto exemplifies amounts of the inorganic particle in the composition greater than 50 wt.%, see table 6 page 46, middle of page where the inorganic compound content is listed.
Regarding clam 8, Harmata discloses surface treatment of the silica particles is typically <5nm thick, which is very close to the lower end of the claimed range. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Yano but applying the surface treatment to the hollow silica in a thickness of 5 nm with the motivation of optimizing the interaction between the particles and polymer binder, as disclosed by Harmata.
Regarding clam 9, Akimoto teaches the inorganic particle has an average diameter of 1-200 nm or more preferably 10-70 nm ¶[0092] and exemplifies two hollow silicas with average diameters of 48 nm and 64 nm, ¶¶[0567-0571].
Although Akimoto does not explicitly disclose the median D50, at least many particle populations with an average particle diameter in the specified range would inherently also comply with the range of D50 values set forth in claim 9.
Regarding claims 12-13, Akimoto teaches the inorganic particles make up preferably 70-96 wt.% of the inorganic-organic composite ¶[0166] and is exemplified in amounts greater than 50 wt.%, see table 6 page 46, middle of page where the inorganic compound content is listed, which falls within the claimed range for claim 12. This would mean the polymer (thermosetting resin) is preferably 4-30 wt.% of the composite.
Furthermore, the amount of crosslinker (thermosetting monomer) is not given a specific range in the broader disclosure but the Celoxide 2021P epoxy crosslinker is exemplified in the amount of 5.3 wt.% for example 11 in table 5-continued, bottom of page 45, which reads on the claimed amount of monomer for claim 12.
Using the exemplified amount of crosslinker and photo acid generating agent used in example 11 of 0.7, that leaves 94 wt.% of the composite, which can then be 65.8-90.24 wt.% inorganic particles (treated hollow silica) and 3.76-28.2 wt.% polymer, which overlaps with the ranges of claim 12, and the total monomer and polymer overlaps with the range of claim 13.
These ranges overlap with the claimed weight percent ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Akimoto because selection of the overlapping portion of ranges has been held to be prima facie obvious. 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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 14, Akimoto teaches the coating composition may further comprise a surfactant ¶¶[0292, 0297].
Regarding claim 15, Akimoto teaches the coating composition may further comprise reactive diluents such as epoxy resins, and silicone compounds, ¶¶[0292, 0298, 0299] which read on the dispersants.
Regarding claim 16, Akimoto teaches the coating may be photopolymerized or thermally cured, ¶[0246]. And further teaches that thermally curing with a thermal cationic polymerization initiator is preferable ¶[0252], which is another name for thermal acid generators.
Regarding claim 17, Akimoto teaches the coating composition may further comprise non-reactive diluents such as high boiling point solvents such as propyleneglycol monomethyl ether, ¶¶0292, 0299], which reads on the propyleneglycolmethyl ether solvent of claim 17.
Regarding claim 18, Akimoto teaches that it is preferable that the coating composition have a solvent, ¶[0195], but it is not required and the amount of solvent is 0-2000 parts by weight, ¶[0176].
Regarding claim 19, Akimoto teaches the coating composition has a viscosity of 5 Pa.s or less ¶[0052], which is equal to 5,000cP. While this is significantly higher than the claimed range, Akimoto does not give a lower limit for the viscosity and furthermore, because dilution with solvents and reactive diluents is taught by Akimoto, it would be obvious to the skilled artisan to adjust the viscosity of the coating composition with solvents and diluents and achieve any desired viscosity.
Regarding claims 20-22, Akimoto teaches making optical articles with the coating compositions comprising the inorganic-organic composite such as an anti-reflection film used in displays, ¶¶[0268-0272, 0287-0290, 0303, 0959]. The anti-reflection film is applied to substrates, ¶[0285].
Akimoto teaches the haze of the composite film is preferably 0-5% ¶[0253], and exemplifies coatings with a haze of less than 3%, see table 9 page 48, where the composite films from the examples are applied to substrates of PET or TAC.
Response to Arguments
Applicant’s arguments filed 8/27, with respect to the rejection over Yano and Yano in view of Harmata have been fully considered and are persuasive. Therefore, the rejections have been withdrawn.
Applicant incorporated the previously indicated allowable claim 3 into claim 1, but upon further search and consideration, a new ground(s) of rejection is made under 103 over Akimoto in view of Harmata. The previously indicated allowable claims 3, 16, and 17 are also now rejected as explained above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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