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 Arguments
Applicant's arguments filed March 3 have been fully considered but they are not persuasive.
Applicant argues on Page 3 line 20 - Page 4, line 3 that “Applicant respectfully disagrees with the Office’s rational because the Office merely states that it implies that it [Senoo’s tin oxide] would have values of L*; a* and b* within the claimed ranges.” The word ‘implies’ was used at Page 3 of the Office Action dated December 3rd, 2025, as cited by Applicant, following a line of reasoning citing features of Senoo’s sample which correspond to features of the instant Specification. Despite quoting and underlining several phrases in a passage of the Office Action, Applicant’s remarks do not address this reasoning that led to the conclusion that Senoo’s material would have the claimed L*, a*, and b* values. The word ‘imply’ has the following definition among others in the Merriam-Webster dictionary: “to involve or indicate by inference, association, or necessary consequence rather than by direct statement” (Imply. Merriam-Webster, 2026). The Office Action argued that Senoo’s high sample conductivity carries the necessary consequence of it possessing the claimed L*, a*, and b* values, in accordance with the instant Specification. Burden is on applicant to show an unobvious difference.
The claim amendment does not distinguish the claimed product from Senoo, as Senoo teaches the added limitation (see rejection under 35 U.S.C. 102(a)(1) below).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Senoo (WO 2015/050046 A1) (the machine translation of record is referenced below).
Regarding claim 1, Senoo teaches a bead string of tin oxide crystallite (Senoo, Page 30, lines 11-35), which is a bead string comprising a tin oxide crystal particle aggregate (Senoo, Page 30, lines 25-27, “When this support carrier was observed with the transmission electron microscope, it was confirmed that 5 or more particle grains have the chain structure site part which continued in a row in the bead string form.”),
wherein the crystal particle aggregate contains tantalum in an amount of 2.5 mol %, which is represented by Ta (mol)/(Ta+Sn)(mol) x 100 (Senoo, Page 30, line 19, molar ratio of tin and tantalum is 0.975:0.025), and at least one particle having a crystallite size of 20 nm (Senoo, Page 30, line 28, “The average particle diameter of particle grains was 20 nm.”).
Senoo does not explicitly teach that, when the crystal particle aggregate is pressed under a pressure of 0.1 MPa so as to have a thickness of 1 cm, in the color of the resultant particle aggregate represented by the Lab color space, a lightness L* value is 80 or less, a chromaticity a* value is -4 or less, and a chromaticity b* is -3 or less. However, in the instant Specification, tin oxide is prepared in a substantially similar fashion to the procedure employed by Senoo (e.g., Specification, [0019], [0023], corresponding to Examples 1-1 and 2-1, respectively). In Paragraph [0049], the instant Specification states, “As is apparent from Tables 1 and 2, the conductivity of the Examples having such color that the L* is 80 or less, the a* value is -4 or less, and the b* is -5 or less is even higher than the conductivity of the Comparative Examples in which the a* value is equivalent to that of the Examples, but the L* is larger than 80 or the b* is larger than -5.” The conductivity of Senoo’s sample is 1.3E-03 S/cm (Senoo, Original Document, Table 3), or 1,300 μS/cm, whereas the conductivity of the instant Examples is generally in the hundreds of μS/cm range, with the closest Examples 1-1 and 2-1 having conductivities of 560 and 580 μS/cm (instant Specification, Table 1). Therefore, following the logic in Paragraph [0049] of the instant Specification, even though Senoo does not measure the chromaticity of the sample, its higher conductivity compared to the instant Comparative Examples implies that it would have values of L*, a*, and b* within the claimed ranges. See MPEP 2112.I, citing, e.g., Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) (stating that “"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer”).
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.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736