DETAILED ACTION
Response to Amendment
The Amendment filed 8/5/26 has been entered. Claims 1, 5-7, and 10-14 remain pending in the application. Claim(s) 10-14 have been withdrawn. Claim(s) 2-4 and 8-9 have been canceled. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 5/5/26.
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.
Claims 1 and 5-7 are rejected under 35 U.S.C. 112(a), 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 contains the limitation “wherein the primary particles of tungstic acid are acicular particles having a length (L) of 0.01 to 1.8 mm.” The instant specification does not provide proper antecedent basis for the claimed subject matter, i.e., “a length (L) of 0.01 to 1.8 mm.” Claims 5-7 are rejected due to their dependence on rejected claim 1. The specification and prior claim 4 teach a length (L) of 0.01 to 1.8 µm. The change from microns to millimeters appears to be a typo.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parenthesis. Examiner explanations are shown in italics.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al. (KR 101800811 B1), as machine translated, previously cited, in view of MacWilliams et al. (US 3451764 A), previously cited.
Regarding claim 1, art will be applied assuming the length of the acircular particle is intended to be 0.01 to 1.8 µm, due to the likely typo, see above 112(a) rejection. Shin teaches that “the method for manufacturing tungsten oxide according to an embodiment of the present invention precipitates tungstic acid (H<sub>2</sub>WO<sub>4</sub>) from an aqueous tungstate solution, so it may correspond to a wet process” (which reads upon “a tungstic acid fusion formed by agglomerating primary particles of tungstic acid”, as recited in the instant claim; paragraph [0020]). Shin teaches that “the particle size can be as large as the tungstic acid particles produced by the APT manufacturing process, and the particle shape has a grape cluster shape that is separated from each other and does not easily break even during repeated washing processes” (which reads upon “wherein the tungstic acid fusion has a grape-bunch-shaped structure formed therein as the primary particles of tungstic acid are interconnected”, as recited in the instant claim; paragraph [0025]). Shin teaches that “by using the above additives during the substitution process, dissolution, aggregation, and dispersion effects are applied to the precipitated tungstic acid powder, thereby producing particles of a uniform shape larger than a certain size, which can increase process efficiency in the subsequent filtration and washing steps” (which reads upon “as the primary particles of tungstic acid are interconnected”, as recited in the instant claim; paragraph [0026]). Shin teaches that “when an acidic solution acting as a substituent is added to an aqueous solution of sodium tungstate, and the pH of the solution reaches a certain value (e.g., pH 1 or lower), tungstic acid begins to precipitate from the aqueous solution of sodium tungstate, and the tungstic acid powder precipitated at this time tends to aggregate amorphously” (which reads upon “wherein at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion-binding at least 5 or more particles to each other”, as recited in the instant claim; paragraph [0077]). Shin FIG. 5a shows that at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion-binding at least 5 or more particles to each other.
Shin fails to explicitly teach wherein the primary particles of tungstic acid are acicular particles having a length (L) of 0.01 to 1.8 mm and an aspect ratio (L/D) of 12 to 24. However, needle shaped tungstic acid has been known since at least 1967. Shin teaches “allowing tungstic acid particles to be formed in a desired shape” (paragraph [0062]). Shin teaches that “to control the size and shape of the precipitated tungstic acid particles, the role of additives added to the sodium tungstate aqueous solution is examined in more detail” (paragraph [0069]; size and shape can be controlled).
MacWilliams is similarly concerned with the preparation of tungstic acids (title). MacWilliams teaches “a method for making a tungstic acid having a uniform, fine particle size ranging between 0.1-2 microns” (which reads upon “the primary particles of tungstic acid having a length (L) of 0.01 to 1.8 μm”, as recited in the instant claim; column 1, lines 23-30). MacWilliams teaches that “the particles of which are dendritic clusters having needle-like projections from the core” (which reads upon “wherein the primary particles of tungstic acid are acicular particles”, as recited in the instant claim; column 2, lines 15-18). MacWilliams teaches that “prior commercial tungstic oxides had no uniformity of particle size, nor shape, unlike the tungstic oxides which can be prepared from the tungstic acids of this invention” (column 1, lines 40-45). MacWilliams teaches that “the products of this invention are stable to growth for many weeks when in contact with mother liquor” (column 1, lines 45-50). MacWilliams teaches that “a new desirable tungstic acid can be prepared which gives rise to the desirable products mentioned above by precipitating a tungstic acid under conditions to give a minor amount of ammonium substitution” (column 1, lines 55-60). MacWilliams teaches that “examination of the tungstic acid by electron microscopy shows the particulate dendritic clusters to be in the 0.1-0.3 micron size range.” (which reads upon “wherein the primary particles of tungstic acid are acicular particles having a length (L) of 0.01 to 1.8 µm and an aspect ratio (L/D) of 12 to 24”, as recited in the instant claim; column 4, lines 48-50; one of ordinary skill in the art would understand that crystal dendrites typically have an aspect ratio of 5:1 to 20:1). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Here, the claimed range of 12-24 overlaps the range disclosed by the prior art of 5-20. Accordingly, the prior art renders the claim obvious.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the size and shape, as taught by MacWilliams, including the aspect ratio of needle like structures such as within the claimed ranges in order to create tungstic acid for use in creating commercial tungstic oxides with uniformity of particle size, and shape which are stable to growth for many weeks when in contact with mother liquor.
Regarding claims 5-7, modified Shin teaches the tungstic acid fusion of claim 1 as stated above. Shin teaches that “from Table 2 above, it was confirmed that as the specific gravity of the sodium tungstate aqueous solution decreases, smaller tungstic acid particles are formed, and as the specific gravity increases, larger tungstic acid particles are formed” (paragraph [0121]; size can be controlled). Shin teaches that “an appropriate specific gravity of the sodium tungstate aqueous solution capable of forming tungstic acid particles of 10 to 30 μm in size can be selected” (which reads upon “wherein a diameter of the tungstic acid fusion is 30 μm or less”, as recited in instant claim 5; paragraph [0121]). Table 2 of Shin shows that the diameter of the tungstic acid is 1-10 μm (which reads upon instant claims 6-7; Table 2, with spot translation of the headings). Shin teaches that “adding the ammonium compound before the acidic solution is advantageous in terms of forming particles with a more even distribution, and adding hydrogen peroxide after the acidic solution is advantageous in that it allows for the precipitation of tungstic acid under the same pH conditions, thereby enabling the production of a powder with more regular shape” (paragraph [0045]; shape can be controlled; more even distribution reads on controlling the standard deviation). Shin teaches “allowing tungstic acid particles to be formed in a desired shape” (paragraph [0062]). Shin teaches that “to control the size and shape of the precipitated tungstic acid particles, the role of additives added to the sodium tungstate aqueous solution is examined in more detail” (paragraph [0069]; size and shape can be controlled). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to control the size and shape, including the standard deviation of the size such as within the claimed ranges in order to create tungstic acid for use in creating a predictable and consistent size tungsten oxide powder.
Response to Arguments
Applicant's arguments filed 8/6/26 have been fully considered but they are not persuasive. Applicant argues that Shin fails to disclose or suggest any of these limitations (that the primary particles of tungstic acid are acicular particles having a length (L) of 0.01 to 1.8 mm and an aspect ratio (L/D) of 12 to 24, or a combination of acicular particles and spherical particles having a diameter of 0.01 to 2.0 pm in a ratio of (weight of acicular particles) : (weight of spherical particles) of 1: 0.3 to 3, and that at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion-binding at least 5 or more particles to each other) (remarks, page 6). Applicant argues that Shin does not disclose that the primary particles of tungstic acid are acicular particles having a length (L) of 0.01 to 1.8 pm and an aspect ratio (L/D) of 12 to 24, or a combination of acicular particles and spherical particles having a diameter of 0.01 to 2.0 pm in a ratio of (weight of acicular particles):(weight of spherical particles) of 1:0.3 to 3 (remarks, page 6). This is not found convincing because Shin is not relied upon to teach the instant limitation, MacWilliams is, as stated above. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that Shin does not disclose or suggest that at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion-binding at least 5 or more particles to each other (remarks, page 6). Applicant argues that Shin merely describes agglomerated particles without disclosing the claimed degree of fusion-binding or the claimed quantitative relationship among the primary particles of tungstic acid (remarks, pages 6-7). This is not found convincing because Shin FIG. 5a shows that at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion-binding at least 5 or more particles to each other. Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). See MPEP § 2125.
Applicant argues that MacWilliams likewise fails to disclose or suggest primary particles of tungstic acid satisfying the claimed length (L), aspect ratio (L/D), diameter, ratio of (weight of acicular particles):(weight of spherical particles), and at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion- binding at least 5 or more particles to each other (remarks, page 7). This is not found convincing because the limitations regarding diameter and ratio of (weight of acicular particles):(weight of spherical particles) are conditional and not reached if the limitation of acircular particles is reached. This is not found convincing because the limitations regarding at least 80% or more of the primary particles of tungstic acid are agglomerated by fusion- binding at least 5 or more particles to each other are shown by Shin as stated above. MacWilliams is not relied upon to teach the instant limitation, as stated above. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). MacWilliams teaches that “examination of the tungstic acid by electron microscopy shows the particulate dendritic clusters to be in the 0.1-0.3 micron size range.” (which reads upon “wherein the primary particles of tungstic acid are acicular particles having a length (L) of 0.01 to 1.8 µm and an aspect ratio (L/D) of 12 to 24”, as recited in the instant claim; column 4, lines 48-50; one of ordinary skill in the art would understand that crystal dendrites typically have an aspect ratio of 5:1 to 20:1).
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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
