DETAILED 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 § 102
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 –
(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.
Claim(s) 1-8, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U. S. Patent Application Publication No. 2020/0139433 (hereinafter referred to as Matsumoto).
Matsumoto, in [0108], discloses that the metal oxide containing composition is coated onto a substrate to form a film and subjected to heating to form the metal-oxide containing film. Matsumoto, in [0081]-[0084], [0155]-[0158], discloses a metal oxide containing composition that can be used to form a cured film (coated and heated to form a film), and the composition includes (A) metal oxide fine particle dispersion liquid that includes metal oxide particles dispersed with carboxylic acid compound (claimed capping agent) (see [0014]-[0017], [0054]-[0055]), (B) base material component (see [0084]-[0085]), and solvent, wherein the content of the metal oxide fine particle is 50% by mass or more, and more preferably 70% by mass or more in the composition, and Matsumoto, in [0056], discloses that organic component (capping agent) is less than 20 parts by mass, and thereby, will inherently possess the claimed ratio (25 mass% or more, 50 mass% or more). Matsumoto, in [0022], discloses that the metal oxide fine particles have an average diameter of 1nm and are inherently and necessarily the same claimed nanoparticle clusters. Matsumoto, as disclosed in the preceding sentences, teaches the same claimed composition of a metal oxide fine particle (having nanosized diameter, and in the claimed content), capping agent (carboxylic acid compound), same claimed base material and solvent, and is coated and heated in the same claimed manner and will inherently possess the claimed reduced volume shrinkage ratio (claims 1-2, 5, and 8). Matsumoto, in [0155], and [0498], discloses that the composition can include a surfactant (claim 3). Matsumoto, in [0021], discloses that the metal oxide fine particles can include oxides of Cu, In, Sn, Ti, Hf, Al, Ce, Zn, La, yttrium, Zr, Mg (claim 4). Matsumoto, in [0108], discloses that the metal oxide containing composition is coated onto a substrate to form a film and subjected to heating to form the metal-oxide containing film (claim 5). Matsumoto, in [0687]-[0688], discloses that the metal oxide fine particle-containing composition is coated onto a substrate and baked to a temperature of more than 350°C and less than 1000°C (includes the claimed 400°C or more) (claim 6). Matsumoto, in [0560], discloses that the metal oxide containing cured film can be used as a hard coat or hard mask (claim 7).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/877,518 (U. S. Patent Application Publication No. 2025/0388766). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-12, of copending Application No. 18/877,518 (U. S. Patent Application Publication No. 2025/0388766) discloses a metal oxide dispersion that comprises a metal oxide nanoparticle, capping agent, organic content (includes base material), surfactant, and solvent, and the dispersion is coated and heated to form a coating film and thereby fully encompasses claims 1-8 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F. Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. 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.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 December 30, 2025.
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