CTNF 18/215,233 CTNF 75688 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1, 4, and 8-9 i s/are re jected under 35 U.S.C. 102(a1) as be ing a nticipa ted by Nakaji ma et al (US 7,959,980). Nakajima sets forth hydrophilic liquid compositions. Said compositions comprise (a) a photocatalytic material and (b) a binder, wherein the binder is hydrophilic and comprises an essentially completely hydrolyzed organosilicate—see summary, col. 4, lines 10-15. The photocatalytic material is present in the composition in the form of particles having an average crystalline diameter of 1 to 100 nm, wherein Nakajima sets forth titanium oxide particles—see col. 5, lines 20-25 and lines 47-52. Nakajima sets forth the hydrolyzed organosilicate is a network polymer represented by the formula: PNG media_image1.png 81 110 media_image1.png Greyscale , wherein n is a positive number—see col. 8, lines 17-25. This is deemed to read on applicant’s “long chain siloxane compound” in claim 1. Nakajima sets forth the binder comprises a tetraalkoxysilane, water, and an organic solvent—see col. 7, lines 15-46 and col. 9, lines 9-11. Regarding claim 1: It is deemed from the above teachings Nakajima set forth a photocatalytic coating comprising (a) photocatalytic particles and a binder composition comprising water, an organic solvent and a tetraalkoxysilane, wherein the hydrolysis condensate is a long chain siloxane compound. Regarding claim 4: Per example 1, Nakajima sets forth a preparation of a hydrolyzed organosilicate binder (b). Said preparation comprises adding to tetramethoxysilane a hydrolysis catalyst solution comprising deionized water and nitric acid to form a partially hydrolyzed silane solution, wherein the partially hydrolyzed silane solution is added to an aqueous solution comprising 290.5 g of ethanol and 290.5 g of water to obtain a diluted silane solution having a pH of ~5. To said diluted silane solution, Nakajima sets forth, adding 0.80 g of acetic acid to adjust the pH to ~3.9, wherein the resultant solution fully hydrolyzes to obtain a 1 % solution of organosilicate binder solution—see example 1. To form the binder composition, the hydrolyzed organosilicate solution of example 1 is added to water and the pH is adjusted to 1.8 by adding 2N hydrochloric acid. Next, Nakajima sets forth preparing (a) the photocatalytic material by reducing the pH of a titania sol to 1.9 by adding 2N hydrochloric acid to a titania sol. To prepare the hydrophilic liquid composition the titania sol is added to the organosilicate solution, wherein the liquid medium in the organosilicate binder solution comprises water and ethanol (alcohol) and the weight ration of the ethanol in the hydrophilic liquid composition is 27 % (290.5g water + 290.5 ethanol + 400 g water (example 6, comp. A, table 6) = 1061 g, wherein 390.5/1061 * 100 = 27.38%) —see example 6, composition A in table 6. Regarding claim 5: The overall teachings set forth the liquid composition can include inorganic particles, such as silica (claim 5), aluminum oxide, for enhanced mar and scratch resistance—see col. 10, lines 56-65. Regarding claim 8-9: Nakajima sets forth in the examples coating composition E (Table 1) further comprising a surfactant (surfynol 465) onto a painted aluminum panel having a thickness of 1.27 microns to 3.81 micron (0.05 – 0.15 mol dry film thickness) and baking for 25 sec to dry—see col. 20 lines 35-40. In light of above, the presently cited claims are anticipated by the reference . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim(s ) 5 and 11 is /are rejected under 35 U.S.C. 103 as being unpatentable over Na kajima (cited above). Na kajima is set forth above as teaching a liquid coating composition which is deemed to anticipate the instantly claimed photocatalytic composition. Regarding claims 2: Nakajima does not set forth the binder condensate (polysiloxane polymer) has a viscosity at 20 deg. C of the dispersion liquid in which 10 wt. % of the hydrolysis condensate is dispersed in ethanol is 2.0 cps or more and 4.0 cps or less. However, it is deemed Regarding claim 5: It is set forth in the overall teachings the hydrophilic liquid composition can further comprises an antimicrobial enhancing material, such as, for example, metals; such as silver, copper, gold, zinc, a compound thereof, or a mixture thereof—see col. 11, lines 20-24. Therefore, it would have been within the skill level of an ordinary artisan to add a filler, such as copper, zinc, and silver with a reasonable expectation of successfully obtaining a liquid composition having both photocatalytic and antimicrobial properties, in absence of evidence to the contrary and/or unexpected results. Regarding claim 11: Nakajima sets forth said liquid coating composition are used to coat various articles, such as computer displays—see col. 18, line 5. Therefore, from the overall teachings of the reference, in absence of evidence to the contrary and/or unexpected results a skilled artisan could obtain and/or make a computer display comprise a coating composition as set forth by Nakajima. Claim Rejections - 35 USC § 102/35 USC § 103 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-20-aia AIA 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. 07-27-aia AIA Claim(s) 2-3 an d 12-14 is/a re rejected under 35 U.S.C. 102(a1) a s a nticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Naka jima (set forth above). Naka jima is set forth above as teaching a liquid coating composition which is deemed to anticipate the instantly claimed photocatalytic composition. Regarding claims 2: Nakajima does not set forth the binder condensate (polysiloxane polymer) has a viscosity at 20 deg. C of the dispersion liquid in which 10 wt. % of the hydrolysis condensate is dispersed in ethanol is 2.0 cps or more and 4.0 cps or less. However, it is deemed Nakajima sets forth the same method as disclosed and, as such, The courts have upheld Products of identical chemical composition cannot 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. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art-- In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the alterative, where the prior art discloses product that appears to be either identical with or only slightly different from product claimed in product-by-process claim; Patent Office can require applicant to prove that prior art products do not necessarily or inherently possess characteristics of his claimed product; whether rejection is based on "inherency" under 35 U.S.C. 102, on "prima facie obviousness" under 35 U.S.C. 103, jointly or alternatively, burden of proof is same; Patent Office that has reason to believe that functional limitation asserted to be critical for establishing novelty in claimed subject matter may, in fact, be inherent characteristic of prior art, possesses authority to require applicant to prove that subject matter shown to be in prior art does not possess characteristic relied on. Regarding claim 3: Nakajima does not expressly set forth the viscosity of the liquid composition; however, it is deemed composition A in example 6 comprises 290.5 g of water + 290.5 g of ethanol (binder solution) and another 480 g of water (liquid composition comprising (a) photocatalytic sol particles and (b) binder)), therefore, the composition is mainly an aqueous solution comprising an organic solvent, wherein water has a viscosity of 1 cps at 25 deg. C and ethanal has a viscosity of 1.2 cps at 20 deg. C. Thus, the composition should inherently have a viscosity in the claimed range in absence of evidence to the contrary and/or unexpected results. In the alternative, since The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. Regarding claim 12: In example 1, Nakajima set forth, in the first stage preparation of the tetraalkoxysilane (TMOS) adding 15.5 g (0.10 mol) of TMOS to 1.6 g of catalytic solution A, comprising 7000 g of water and 1.0 g of nitric acid, wherein solution A, therefore said first stage comprises a molar ratio of water in an amount of 1.1 to 1 mole of TMOS. It is deemed the 1.1 mol of water to 1 mol of TMOS would be indistinguishable from a molar ratio of 1 mol of water to 1 mol of tetraalkoxysilane as claimed. The courts have upheld Products of identical chemical composition cannot 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. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art-- In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the alterative, where the prior art discloses product that appears to be either identical with or only slightly different from product claimed in product-by-process claim; Patent Office can require applicant to prove that prior art products do not necessarily or inherently possess characteristics of his claimed product; whether rejection is based on "inherency" under 35 U.S.C. 102, on "prima facie obviousness" under 35 U.S.C. 103, jointly or alternatively, burden of proof is same; Patent Office that has reason to believe that functional limitation asserted to be critical for establishing novelty in claimed subject matter may, in fact, be inherent characteristic of prior art, possesses authority to require applicant to prove that subject matter shown to be in prior art does not possess characteristic relied on. It is prima facie obvious when proportions are closes enough to the reference proportion to lead to an expectation of the same properties—see Titanium Metals vs. Banner, 227 USPQ 773. Thus, in absence of evidence to the contrary and/or unexpected results it is deemed claim 12 is found in the reference. Regarding claim 13: Nakajima sets forth holding the tetraalkoxysilane at -25 deg. C for the hydrolysis-condensation reaction in stage 1—see example 1. Regarding claim 14: Nakajima sets forth the first step and second step, as discussed in the above anticipation rejection. Nakajima sets forth reducing the pH level to 3.9 by adding 0.8 g of hydrochloric acid, which is less than the 1.6 g of nitric acid addition in stage 1—see example 1, line 67. However, prior to obtaining the hydrophilic liquid composition by adding the tetraalkoxysilane binder (b) to the photocatalytic particles (a) for dispersion, Nakajima sets forth reducing the pH level of the tetraalkoxysilane to 1.9 pH from 3.9 pH with the addition of 1.8 g of 2N hydrochloric acid. It would have been within the skill level of an ordinary artisan to obtain the pH of 1.9 pH in the second stage of obtaining said particles since it is obvious to add in ingredients simultaneously where previously added sequentially—In re Freed 165 USPQ 570 . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, cited above, does not set forth the addition of said components . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5. 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, Heidi Riviere-Kelley can be reached at 571-270-1831. 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. /SANZA L. McCLENDON/Primary Examiner, Art Unit 1765 SMc Application/Control Number: 18/215,233 Page 2 Art Unit: 1765 Application/Control Number: 18/215,233 Page 3 Art Unit: 1765 Application/Control Number: 18/215,233 Page 4 Art Unit: 1765 Application/Control Number: 18/215,233 Page 5 Art Unit: 1765 Application/Control Number: 18/215,233 Page 6 Art Unit: 1765 Application/Control Number: 18/215,233 Page 7 Art Unit: 1765