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 .
Status of Application
1. This application is a 371 of PCT/JP2021/046195, which was filed on 12/15/2021.
Claims 1-7 were originally presented in this application for examination.
Claims 1-7 are currently pending in this application and under consideration.
Specification
2. The examiner has not checked the specification to the extent necessary to determine the presence of all possible minor errors (grammatical, typographical, and idiomatic). Cooperation of the applicant(s) is requested in correcting any errors of which applicant(s) may become aware of in the specification, in the claims and in any further amendment(s) that applicant(s) may file.
Applicant(s) is also requested to complete the status of the copending applications referred to in the specification by their Attorney Docket Number or Application Serial Number, if any.
The status of the parent application(s) and/or any other application(s) cross-referenced to this application, if any, should be updated in a timely manner.
Claim Objections
3. Claim 1 is objected to because of the following informalities:
A. In line 1, “A production method for” is suggested changed to --A method for production of--.
B. In line 5, “one type or two or more types” should be changed to --one or more types--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 (Second Paragraph)
4. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 & 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A. Regarding claim 3, the claim recites “an organic solvent (C) having a dielectric constant of 10 or lower” but not particularly pointed out specific solvent in the claim, thus renders the claim unclear.
B. Regarding claim 7, the limitation on “wherein a content amount of the tungsten oxide in the composition (IV) is 10% by mass to 50% by mass” is unclear as to why there is only 10% to 50% by mass of the tungsten oxide in the composition (IV) since there are no other compounds present in the composition besides the organic solvent. This limitation renders the claim unclear as to what takes up the other 90% to 50% in the composition (IV).
Claim Rejections - 35 USC § 103
5. 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.
Claim(s) 1-2 & 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2010/0207061).
Kim broadly discloses a method for preparing a metal oxide comprising the steps of:
a) dissolving metal halide in a solvent;
b) adding and reacting water or metal hydroxide having strong basicity; and
c) adding base to the reaction solution and then raising a temperature thereof to form the metal oxide (see page 3, claim 1).
d) stopping the reaction by inputting a large amount of water or metal hydroxide and raising the temperature thereof; and
e) obtaining the metal oxide by a separation and a cleaning (see page 3, claim 2).
The metal of metal halide is at least one metal selected from a group including tungsten (see page 3, claim 3).
Example of metal halides including anhydrous bromo tungsten (V)(WBr5) (see page 1, [0015]).
The reference further discloses that in the step a) of the preparation method, the dissolving temperature is not largely limited, but generally is between 0 and 50oC (see page 1, [0018]).
The reaction temperature of step c) is not largely limited, but is preferably in the range of 10 to 200oC, more preferably 30 to 150oC, most preferably 80 to 120oC (see page 2, [0027]).
Regarding claim 1, the reference appears to teach the claimed method for production of a tungsten oxide composition, comprising (1) reacting a tungsten halide and a monohydric alcohol (solvent), and (2) mixing the mixture of step (1) with an amine (base), but does not teach step (3), which is removing at least a part of the monohydric alcohol and a part of compound (A) from the composition (II) to obtain a composition (III).
It is prima facie obvious for a person skilled in the art at the time the invention was made to do the same in the method of Kim because removing excess amounts of the solvent and the base from the reaction mixture in order to avoid moistures in the solids and to obtain the high purity solids product. Example on page 3, [0044] shows the solids are separated by a centrifuge and then dried to obtain the products, this separation step appears meet the claim limitation of step (3).
With respect to the claimed heating step being performed at “100oC or higher and 250oC or lower” in claim 1, step (1), even though the reference does not teach to heat treating the mixture in step (a), however he does teach to raise the reaction temperature to a range of 10 to 200oC after the base is added in step (c) (see page 2, [0027]). Thus, the reference teaches the claimed reaction temperatures and the disclosed temperature range is overlapping with the claimed temperature range. Example on page 3, [0044] shows the reaction temperature was raised to 120oC.
Regarding claim 1, the reference teaches the claimed reaction temperatures, but silent with respect to the heating rate. Controlling the temperature-increasing rate in the method of the reference is prima facie obvious to a person skilled in the art because it is a results-effective variable and it involves only routine experimentation of an ordinary skill person in the art to do so, see In re Boesch and In re Aller.
Regarding claim 4, the reference discloses suitable solvents including alcohols having a carbon of number 1 to 12, such as methanol, ethanol, propanol, butanol, hexanol, heptanol, octanol, decanol, etc. (see page 1, [0017]).
Regarding claim 5, the reference discloses suitable bases including primary, secondary, tertiary, quaternary amines (see page 2, [0026]).
Allowable Subject Matter
6. Claims 3 & 6 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.
As concerned with claim 3, Kim (US 2010/0207061 A1) is identified as the closest prior art, which discloses the claimed method for production of a tungsten oxide composition comprising steps (1), (2), and (3) as recited in the instant claim 1, however this reference does not teach the method further comprising step (4), which is mixing the composition (III) and an organic solvent (C) having a dielectric constant of 10 or lower to obtain a composition (IV).
As concerned with claim 6, Kim (US 2010/0207061 A1) discloses the claimed method for production of a tungsten oxide composition comprising steps (1), (2), and (3) as recited in the instant claim 1, but does not disclose a crystallite diameter of the tungsten oxide calculated by XRD measurement is 1 to 30 nm.
There is no motivation to combine the teachings of the prior art references together to arrive to the claimed invention.
Citations
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All references are cited for related art. See PTO-892 Form prepared.
Conclusion
8. Claims 1-7 are pending. Claims 1-5 & 7 are rejected. Claim 6 is objected. No claims are allowed.
Contacts
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner CAM N. NGUYEN whose telephone number is (571)272-1357. The examiner can normally be reached on M-F (8:30 am – 5:00 pm) at alternative worksite or at cam.nguyen@uspto.gov.
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, Anthony Zimmer, can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cam N. Nguyen/Primary Examiner, Art Unit 1736
/CNN/
December 12, 2025