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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-8 in the reply filed on 3/9/2026 is acknowledged.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/184505.
Regarding claim 1, WO ‘505 teaches a bismuth oxide powder, which would include particles that may include multiple surface ligand of carboxylic acid (Abstract). The ligands may be different carboxylic acids that may include, such as hydroxypropyl groups, or may not include hydroxyl groups (Description of Embodiments).
WO ‘505 does not expressly state that the ligands are a hydroxyl group-free carboxylic acid and a hydroxyl group-containing carboxylic acid. However, it would have been obvious to the person having ordinary skill in the art to the select a hydroxyl group-free carboxylic acid and a hydroxyl group-containing carboxylic acid among the finite number of predictable alternatives with predictable results. See MPEP 2143.
Regarding claim 2, the surface groups may be aromatic (Abstract).
Regarding claim 3, the surface groups may include propyl groups, which are 3 carbons (Description of Embodiments).
Regarding claim 4-5, the carboxylic acids that may include hydroxyl groups, such as hydroxypropyl groups (Description of Embodiments).
Regarding claim 6, the surface groups may be a hexyl group (Description of Embodiments), which is 6 carbons.
Regarding claims 7-8, WO ‘505 does not expressly state the particle size or the amount of surface treatment. However, “the 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.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES A FIORITO/Primary Examiner, Art Unit 1731
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