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 .
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 for establishing a background for determining obviousness under 35 U.S.C. 103 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, 4-7, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishii (WO 03/104319) in view of Bockstie (US 3834938) in view of Haluska (US 5387480).
Claims 1, 4, 6:
Ishii teaches a method for manufacturing silica-coated zinc oxide fine particles (abstract) useful as a filler in resins and polymers (pg. 31-36). The process brings zinc oxide particles into contact with silicic acid, water, an alkali, and an organic solvent (pg. 8). Zinc oxide is a high-dielectric-constant powder (see instant claim 3). The silicic acid is formed by the reaction of tetraalkoxysilane, water, and alkali (pg. 9) and is deposited onto the zinc particles (pg. 13). Because this is a buildup of material onto the zinc oxide particles, the coated particles necessarily have a larger particle size compared to the uncoated zinc oxide particles. Thereafter, the coated particles may be fired (pg. 17). Silica-coated titanium oxide can be produced by coating in the same method as silica-coated zinc oxide (pg. 27).
Ishii does not teach adding RSiX3 to coat the particles and form polysiloxane or the particulars of the firing step.
As an initial matter, the examiner does note that Ishii does state RSiX3 compounds are not suitable for forming silicic acid (pg. 9-10). This is true in the sense that the R group is not readily hydrolysable and therefore the compound is unable to form silicic acid. Ishii does not teach away from RSiX3 compounds because Ishii does not identify any specific disadvantage for their inclusion.
Bockstie teaches a similar composition including RSiX3 (R=methyl, X=alkoxy, a hydrolysable group) monomers for making monomethyl polysiloxane resins by hydrolysis condensation reaction (4:28-75) and ultimately cured to form silica (4:54-56; 5:15-16). The claimed T unit is assumed to represent a “unit cell” within the polymer structure, and does correspond to the monomethyl polysiloxane resin. Bockstie explains that the inclusion of the methyl group gives a high degree of moisture resistance without affecting the flameproof properties (4:55-59). The monomethyl monomer can be used in conjunction with alkyl silicates such as TEOS (5:32-49).
Haluska teaches a similar procedure where the polysiloxane is cured/fired/calcined at a temperature of 50-1000 °C in an oxygen atmosphere for up to about 6 hours to convert to silica (5:13-29).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Ishii and further include monomethyl RSiX3 monomers in order to improve moisture resistance and subject the coated particles to calcining in an oxygen atmosphere in order to convert the silicon polymer into silica.
Claims 9:
The thickness of the silica coating relative to the size of the zinc oxide particles varies and does include where the particle size is less than or equal to 1/3 the particle size of polysiloxane (Ishii pg. 22). The same analysis applies to the volume fraction. The goal of Ishii is for the resulting particles to have a size less than 5 µm (pg. 4).
Claim 5:
The silicon monomer taught by Ishii and TEOS taught by Bockstie are analogous to the claimed Q unit.
Claim 7:
Ishii further teaches adding a hydrophobicity-imparting agent to the silicon oxide powder filler including chlorosilane and alkoxysilanes (pg. 20) which correspond to the claimed silane coupling agent.
Claim 10:
Ishii teaches incorporating the resulting filler into polymer [0032] and Haluska teaches the use in circuit boards (2:1-9).
Claim 11:
Ishii teaches sieving to remove particles above 5µm in size (pg. 41-42).
Response to Arguments
Applicant's arguments filed 6/8/26 have been fully considered but they are not persuasive.
As noted above, Ishii teaches that the method for coating zinc oxide particle with silica can be applied to titanium oxide particles also (pg. 27).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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