DETAILED ACTION
This office action follows a reply filed on April 1, 2026. Claims 1 and 4 have been amended. Claims 1-9 are currently pending and under examination.
The rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claims 1-9 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.
In claims 1 and 4, applicants claim “wherein the polyvinyl acetal-based resin is homogeneously acetalized along a polymer chain”.
Applicants point to para 27-28 of the PgPub.
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At no point in this disclosure do applicant disclose homogeneous acetal groups along the chain. Applicants only use the term homogeneous with regards to the type of reaction used to prepare the polyvinyl acetal. Applicants do not specifically define a homogenous reaction method, as the word may is used to describe the results of a homogeneous reaction. While applicants disclose the amount of acetal and acetyl groups present in the polyvinyl acetal-based resin, applicants do not disclose how they are arranged on the polymer chain, as claimed.
Applicants argue that the amendment effects the scope of the claim as follows:
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At no point do applicants disclose the acetalization as “uniform”, “non-blocky”, or “non-clustered”.
Therefore, it does not appear that applicants have basis for claiming the spatial distribution of the acetal groups along the polymer backbone.
Claim Rejections - 35 USC § 102
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2013-035694; however, for convenience, the machine translation will be cited below.
JP ‘694 exemplifies a dielectric slurry prepared by adding a resin solution (B) to an inorganic dispersion liquid (A), where the inorganic dispersion liquid (A) comprises 1 part polyvinyl acetal (A) and 100 parts barium titanate and the resin solution (B) comprises 8 parts polyvinyl acetal (B), which is based on 100 parts barium titanate after the addition of (B) to (A) (pp. 11-12, [0048]-[0050]).
Polyvinyl acetal (A) is described as a reaction product of a saponified polyvinyl alcohol and butyraldehyde, suggesting the claimed polyvinyl butyral (p. 8, [0044]).
(A2), (A6), (A9) and (A10) meet applicants’ dispersant, as shown below (From Table 1):
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PVA (A2) has a degree of polymerization of 185, 35 mol% hydroxy groups, 64 mol% acetal groups and 1 mol% acetyl groups.
These dispersants anticipate instant claims 1 and 3.
As to claim 2, A2 has a molecular weight of about the following, where the hydroxyl units have a molecular weight of 44 g/mol, the acetal units have a molecular weight of 142 g/mol and the acetyl units have a molecular weight of 86 g/mol: 142(64)+86(1)+44(35)=9088+86+1540=10,714 g/mol.
Barium titanate is a dielectric particle. Therefore, claims 4, 5 and 8 are anticipated.
Polyvinyl acetal (B1) has a degree of polymerization of 1700 and is exemplified in Table 2, as shown below, and anticipates applicants’ binder:
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The following examples anticipate instant claims 6-7:
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JP ‘694 anticipates instant claims 1-8.
Claim Rejections - 35 USC § 103
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-035694, as applied above to claims 1-8, and further in view of Chun (US 2020/0161048).
JP ‘694 anticipates instant claims 1-8, as described above and applied herein as such, as JP ‘694 exemplifies a barium titanate slurry comprising 1 part PVA with a degree of polymerization of 185, 35 mol% hydroxy groups, 64 mol% acetal groups and 1 mol% acetyl groups, which meets applicants’ dispersant, and 8 parts PVA with a degree of polymerization of 1700, which meets applicants’ binder.
JP ‘694 teaches that the slurry compositions can be used to prepare multilayer ceramic capacitors (p. 1, [0002]-[0003]), where the ceramics are listed to include alumina, zirconia, barium titanate, magnesia, silica nitride, aluminum nitride, etc. (p. 4, [0021]), but does not teach where the dielectric particle further comprises one or both of calcium and zirconium.
Chun teaches multilayer ceramic capacitors comprising a dielectric composition including a ceramic powder, a high polymerization binder, and a low polymerization dispersant having a degree of polymerization of at least 100, teaching the ceramic powder to include barium titanate, or a ceramic powder which may have elements such as Ca or Zr, employed in barium titanate, such as the following (p. 2, [0028]):
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Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used Ca or Zr employed in barium titanate, as Chun teaches that these are functional equivalents to barium titanate when used as a dielectric composition in a multilayer ceramic capacitor.
JP ‘694 in view of Chun is prima facie obvious over instant claim 9.
Response to Arguments
Applicant's arguments filed April 1, 2026 have been fully considered but they are not persuasive.
Applicants arguments have been addressed in the new matter rejection above.
Alternatively, preparing a PVB with uniform distribution of acetal groups is prima facie obvious, as it is known that uniform distribution of acetal groups results in a PVB with improved solubility, transparency, moldability and processability, as taught by US 3926918.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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