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 .
Priority
The instant application is a 35 USC 371 National Stage filing of international application No. PCT/JP2021/046954, filed December 20, 2021, which claims foreign priority under 35 USC 119(a)-(d) from Japanese application JP2020-216109, filed December 25, 2020.
Information Disclosure Statements
The information disclosure statements (IDS) dated June 7, 2023 and July 24, 2024 were in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS documents were considered and signed copies of the 1449 forms are attached.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-3 and 6, drawn to a polyoxo niobate in the reply filed on October 29, 2025 is acknowledged.
Status of Claims
Currently, claims 1-6 are pending in the instant application. Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention there being no allowable generic or linking claim.
Claims 1-3 and 6 read on the elected invention and are therefore under consideration herein.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015-081220 (“the ‘220 publication”).
Determining the scope and contents of the prior art
The ‘220 publication (paragraphs [0037]-[0048] and table 1) describes a mixed solution obtained by adding 70-600 parts by weight of ethanol to 100 parts by weight of a niobic acid solution in which the concentration of Nb2O5 was adjusted to 6 mass%, the Nb2O5 having been obtained by a manufacturing method of either adding an amine compound (TMAH in examples 1-6 and choline in example 7) to an ammonium niobate solution and subjecting the resultant to a heat treatment (examples 1-7), or mixing an amine compound (TMAH) with a solution obtained by washing after mixing an ammonium niobate solution with an inorganic acid (examples 8 and 9).
In addition, in terms of the water content in the mixed solution, water is the solvent of the ammonium niobate solution, the amine compound, and the inorganic acid used as starting materials, and thus, the water content as calculated from the mixing ratios thereof exceeds 5.0 mass%.
In addition, regarding the ratio of ethanol in the mixed solution, prior to the addition of ethanol, in examples 1-3 and 6-9, the niobic acid solution comprises the starting materials, components derived from the ammonium niobate solution, the amine compound, and water which is the solvent; therefore, it is considered that the ratio of ethanol in other components (corresponding to the "remainder") is approximately 100 mass%. In addition, in examples 4 and 5, because 0.5 g and 1.0 g of a citric acid hydrate are respectively added to 100 g of the ammonium niobate sol and 0.9 g of the amine compound, the obtained niobic acid solutions contain citric acid in addition to niobic acid, the amine compound, and water, but the ratio of ethanol in the remainder as calculated from the mixing ratios thereof is 70 mass% or more.
Furthermore, in the mixed solution, the niobium content in terms of Nb2O5 as calculated from the mixing ratios of ethanol and the niobic acid sol in which the Nb2O5 concentration was adjusted to 6% satisfies the range set forth in claim 2 of the present application.
Ascertaining the differences between the prior art and the claims at issue
The difference between the instant invention and the prior art is that in terms of molar ratio, the content of the amine compound solvent is 0.50 or more relative to the content of niobium (Nb), whereas in the invention disclosed in document 1, the amine compound/Nb2O5 molar ratio in the mixed solution is 0.1-0.6, that is, the molar ratio of the amine compound relative to Nb is 0.05-0.3.
Resolving the level of ordinary skill in the pertinent art
To this end, it is noted that MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at ___, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
Accordingly, it would not have been considered inventive for the skilled artisan to follow the explicit suggestion of the prior art to vary the amounts of the particular components of the prior art dispersion. Doing so would have been obvious because a person of ordinary skill in the art would be seeking to improve properties such as miscibility of niobic acid in hydrophilic solves. The skilled artisan would have reasonably expected success in doing so since the primary reference teaches each require component as claimed, and varying ranges for the amount of each.
Notably, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0, explaining “[t]hat which infringes if later anticipates if earlier”); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Waite, 168 F.2d 104, 108 (CCPA 1948); In re Scherl, 156 F.2d 72, 74-75 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Swenson, 132 F.2d 1020, 1022 (CCPA 1942); In re Bergen, 120 F.2d 329, 332 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937) (“Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.”); In re Dreyfus, 73 F.2d 931, 934 (CCPA 1934); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., “not substantially less than 13%,” “not substantially below 17%,” and “between about 13[%] and 20%”); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002)(non-precedential)(disagreeing with argument that overlapping ranges were required to find a claim prima facie obvious).
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Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”).
The invention disclosed in the ‘220 publication has a purpose of improving the miscibility of an ammonium niobate solution with hydrophilic solvents such as alcohols (paragraph [0005]), and in paragraphs [0018] and [0019] of the prior art, it is indicated that the miscibility of an obtained niobic acid solution with hydrophilic solvents (alcohols) is enhanced when the used amount of the amine compound is increased, and that the amount is set so as to satisfy the relationship amine compound/Nb2O5 (molar ratio) = 0.1-1.5, that is, a range of amine. As such, the optimizations made in the instant claims are obvious in view of the prior art teachings. In the absence of showing unobvious results, it would have been obvious to one of ordinary skill in the art at the time of the invention when faced with the prior art that to modify the amounts of the components described by the prior art with a reasonable expectation of success in doing so.
Finally, the ‘220 publication does not describe the light transmittance of the mixed solution as required by instant claim 3, but paragraph [0045] of the description of the present application indicates that the light transmittance at a wavelength of 400 nm exceeds 65% when the niobic acid compound is dispersed or dissolved in the present mixed solvent. Thus, in the mixed solution described in the prior art, because the miscibility of the niobic acid solution with ethanol is demonstrated, that is, it is demonstrated that the solution is dissolved or dispersed, it is found that the mixed solution described in the prior art also necessarily has a high light transmittance of a similar extent to the light transmittance set forth in claim 3 of the present application. In addition, the ‘220 publication (paragraphs [0018] and [0019]) indicates that the miscibility of an obtained niobic acid solution with hydrophilic solvents (alcohols) is increased when the used amount of the amine compound is increased; therefore, in the mixed solution described in document 1, it is not found that the fact that there is criticality in configuring the amine compound/Nb molar ratio to be 0.50 or more.
In addition, regarding adhesive properties as in instant claim 6, it is demonstrated in the examples and comparative examples described in paragraphs [0078]-[01 l l], and tables 1 and 2 of the description of the present application that adhesive properties in a case of forming a coating film are high in niobic acid compound-containing solutions having high dispersibility or solubility; therefore, there the mixed solution described in the prior art, suggesting the same dispersion, necessarily has the adhesive properties set forth in claim 6 of the present application. Accordingly, the instantly claimed invention would have been prima facie obvious to a person of ordinary skill in the art at the time of filing.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached on Monday - Thursday, 8:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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