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 Amendment
The preliminary amendment filed 8/18/2023 has been entered. Claims 1-6 are cancelled. Claims 7-14 are added.
Specification
The disclosure is objected to because of the following informalities:
In the Specification, the amount of silazane added in step (A2) is stated to be 0.001 to 1 mol per 1 mol of the SiO2, and the amount of silazane added in step (A3) is stated to be 5-50 mol relative to 1 mole of SiO2 (page 6-7, 19, 22). However, in the Example 1-1, 646.5g of tetramethoxysilane are used, equivalent to 4.25 mol at 152.2 g/mol, to produce the SiO2 in step (A1). Following this, 2g of divinyl tetramethyldisilazane are added in step (A2). The Instant Specification states that this is equivalent to 0.26 Mol to 1 mol of SiO2. However, 2g at 185.4 g/mol is 0.01079 mol, or 0.254 mol per 100 mol of SiO2. Furthermore, in step (A3), 205.3g of hexamethyldisilazane are added, noted as 30 mol per 1 mol of SiO2. However, at 161.39 g/mol, this is equivalent to 1.27mol or 30 mol per 100 mol SiO2. (Instant Specification page 28-29). Similarly in Example 1-5, 3.1g of diphenyl tetramethyldisilazane are used in place of the 2g divinyl tetramethyldisilazane, also noting the amount is equivalent to 0.26 mol per 1 mol SiO2 (page 30). However 3.1g at 285.53 g/mol is 0.01086 mol of divinyl tetramethyldisilazane, or approximately 0.26 mol per 100 mol SiO2. Example 1-6 and Comparative Examples 1-1 and 1-2 also have similar discrepancies in the molar amounts of the silazanes (page 30-31).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 8 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.
Claim 8 claims adding a silazane compound in step (A2) to “the hydrophilic sol-gel silica particle at 0.001 to 1 mol relative to 1 mol of SiO2”. However, the data in the Instant Specification teaches a ratio closer to 0.001 to 1 mol relative to 100 mol of SiO2. As noted above, the Examples teach 646.5g of tetramethoxysilane, equivalent to 4.25 mol of SiO2, treated with 2g of divinyl tetramethyldisilazane, equivalent to 0.0108 mol (page 28-29). The example further states the amount is equivalent to 0.26 mol relative to 1 mol of SiO2. However, the amount is actually equivalent to 0.0108/4.25 = 0.00254 per 1 mol of SiO2. Furthermore, the amount of hexamethyldisilazane used in step (A3), 205.3g is equivalent to 1.272 mol, or 1.272/4.25 = 0.3 mol relative to 1 mol SiO2. The same discrepancies are present in all Examples and Comparative Examples (page 28-32). Therefore, the claim is indefinite as “relative to 1 mol of the SiO-2 unit” is not clearly defined in the Instant Specification.
In the interest of compact prosecution, Examiner will examine the claim as calculated from the examples, as “relative to 100 mol SiO2”.
Claim Rejections - 35 USC § 103
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 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.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US 20100137485) in view of Kudo (US 20080268362).
Regarding claims 7-10, Scholz discloses a process of producing a surface modified silica particle, containing fixed vinyl or vinylsilyl groups as well as hydrophobic silyl groups on the surface ([0011]). Scholz further discloses the modified silica is prepared using various combinations of hexamethyldisilazane, vinyltriethoxysilane, 1,3-divinyl-1,1,3,3-tetramethyldisilazane, and methyltrimethoxysilane ([0089]-[0090], Table 2 page 7). Example S2 specifically teaches a combination of hexamethyldisilazane and 1,3-divinyl-1,1,3,3-tetramethyldisilazane, which meet the claimed chemical compounds used in step (A3) and (A2), respectively, in the Instant Claims 7-8. The amounts of hexamethyldisilazane and divinyl tetramethyldisilazane in example S2 are listed as 15 parts per hundred parts silica and 1.8 parts per hundred parts silica, respectively. This is equivalent to 0.0063 mol of divinyl tetramethyldisilazane per 1.66 mol of SiO2, or 0.38 mol per 100 mol SiO2, and 0.0809 mol of hexamethyldisilazane per 1.66 mol of SiO2, or 4.86 mol per 100 mol SiO2. While the 4.86 mol hexamethyldisilazane per 100 mol of SiO2 is less than 5 in Example S2, no specific maximum/minimum is disclosed by Scholz. Furthermore, Examples S3 and S7 use 20 parts hexamethyldisilazane per 100 parts silica, which would bring the amount to 0.108 mol per 1.66 mol SiO2, or 6.48 mol hexamethyldisilazane per 100 mol SiO2 (Table 2 page 7). However, Scholz does not teach the silica particle as a sol-gel silica particle formed by hydrolyzing and condensing a tetrafunctional silane, partially hydrolytic condensed product thereof, or mixture thereof. While Scholz does not disclose adding the silazanes in separate steps, the MPEP states “selection of any order of mixing ingredients steps is prima facie obvious” In re Gibson, 39F.2d 975, 5 USPQ 230. (MPEP 2144.04 IV. C.)
Kudo teaches a similar method of producing hydrophobic silica, using sol-gel silica instead of fumed (pyrogenic) silica, to prevent aggregation of the silica particles and improve powder flowability and dispersibility ([0014]-[0015], [0040], [0061]). Kudo further teaches a step of synthesizing hydrophilic silica microparticles by subjecting a tetrafunctional silane, Si(OR3)4, is subject to hydrolysis and condensation to produce a dispersion of hydrophilic spherical silica microparticles ([0079]-[0080]). Kudo further teaches tetramethoxysilane and tetraethoxysilane as the preferred examples of the tetrafunctional silane, with Examples 1-6 using tetramethoxysilane as the tetrafunctional silane ([0145]-[0146], [0169]-[0179]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to produce the hydrophobic treated silica particles of Scholz using sol-gel produced silica particles, produced using tetramethoxysilane, as taught by Kudo, to prevent aggregation, and improve powder flowability and dispersibility.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Scholz (US 20100137485) in view of Kudo (US 20080268362) as applied to claims 7-10 above, and further in view of Nishimura (JP 2019182687), Hakojima (JP 2011137097), Yasuno (JP 2016057457), and Tanikawa (US 5707770).
Regarding claims 11-12, modified Scholz discloses all limitations as set forth above. Kudo further teaches the silica microparticles have a particle size in a range of 0.005-0.09µm, or 5-90 nm ([0046]). Kudo further teaches the silica particles have a circularity of 0.8-1 ([0073]). Scholz does not disclose the refractive index, true density, ratio represented by water vapor adsorption specific surface area/ a nitrogen adsorption specific surface area, or a degree of hydrophobicity with methanol.
Nishimura teaches colloidal silica particle with a true density of the silica particles of 1.9 g/cm3 or more ([0009]). Nishimura further teaches the high true density allows the particle to maintain a level of strength, even if surface treated with a disilazane ([0016]-[0017]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the silica of modified Scholz had a true density of 1.9 g/cm3 or more, as taught by Nishimura, to ensure proper strength.
Hakojima teaches a silica particle having a low refractive index, between 1.15-1.40 ([0018], [0032]). Hakojima further teaches when the refractive index is more than 1.40 the particles have insufficient antireflection properties ([0033]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the silica particles of modified Scholz had a refractive index of 1.15-1.40, as taught by Hakojima, to prevent loss of antireflective properties.
Yasuno teaches a sol-gel silica particle treated with hydrophobic treatments, preferably hexamethyldisilazane ([0039]). Yasuno further teaches the resulting trimethylsilyl groups on the silica particles suppress water adsorption, and by adjusting the ratio of trimethylsilyl groups to hydroxyl groups on the silica particle moisture content and adsorption can be controlled ([0036]). While this does not directly teach a value for the ratio of water vapor absorption specific surface area to nitrogen absorption specific surface area, one of skill in the art would recognize controlling the water adsorption would in turn control the ratio. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to adjust the ratio of trimethylsilyl groups to hydroxyl groups on the surface of the silica particle of modified Scholz, as taught by Yasuno, to control the ratio of water vapor absorption specific surface area to nitrogen absorption specific surface area.
Tanikawa teaches an inorganic fine powder with a degree of hydrophobicity measured with methanol is preferably 50% or more to ensure charge relaxation is uniform and improve flowability of the particle (Col 30 line 42-51). Tanikawa further teaches the inorganic fine powder is preferably silica treated silazane, due to its high hydrophobicity (Col 32 line 9-19). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to ensure the silica of modified Scholz possessed a hydrophobicity of 50% or more, as taught by Tanikawa, to ensure uniform charge relaxation and improved flowability.
Regarding claims 13-14, modified Scholz discloses all limitations as set forth above. Kudo further teaches the hydrophobic spherical silica particles are used as external additives for toner ([0003], [0040], [0042]).
Conclusion
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/C.C.S./ Examiner, Art Unit 1737
/MARK F. HUFF/ Supervisory Patent Examiner, Art Unit 1737