DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Claim Amendment filed 09/14/2026
2. Claim 1 was amended to include the new limitation “wherein the powder is used for a filler for optical materials and resins” which is supported at page 3, paragraph [0006] and page 21, paragraph [0038] of the specification as originally filed.
However, claim 1 was also amended to include the new limitation “wherein the powder has a total light transmittance of 89.5% to 91.4%” which introduces new matter in violation of 35 USC 112(a) and necessitates new ground of rejection as set forth below.
Accordingly, this action is made FINAL.
3. The claim objection set forth in paragraph 4 of the previous Office action mailed 05/13/2026 is no longer applicable and thus, withdrawn because the applicants amended claim 1 to correct its informality.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Newly amended claim 1 recites, among other things, “wherein a ratio of the crystalline plate-shaped titanium phosphate particles having a particle diameter of 0.52 µm or more to 0.87 µm or less is 7.0% by mass or less, wherein the powder has a total light transmittance of 89.5% to 91.4%” (Emphasis added). The highlighted new limitation fails to satisfy the written description requirement of 35 USC 112(a), since there is no written descriptive support for this phrase in the application as originally filed, see MPEP § 2163.
Specifically, Table 1 of the specification as originally filed (see paragraphs [0036] and [0037]) shows written descriptive support for powders which are formed of crystalline plate-shaped titanium phosphate particles having a particle diameter of 0.52 µm or more to 0.87 µm or less having a total light transmittance of 89.5% or more to 9.1.4% or less, however, the ratio of these particles was 5.82 mass% or less. Moreover, some of the powders exemplified in Table 1 of the original specification show ratio of 7.22% by mass (which is close to the claimed upper ratio of 7% by mass) being used, but that ratio gives a total light transmittance of 84.1% or more to 87.1% or less (which is below the claimed total light transmittance of 89.5-91.4%). The data provided in Table 1 of the original specification does not provide written descriptive support for the upper portion of the ratio range (e.g., 7.0% by mass) having a transmittance of 89.5-91.4%.
Accordingly, it is deemed that this new limitation introduces new matter in violation of 35 USC 112(a).
It is also noted that since claims 2 and 3 depend on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1, including those that introduce new matter in violation of 35 USC 112(a) for the reasons provided supra.
Response to Applicants’ Arguments in their Remarks filed 09/14/2026
5. The obviousness-type double patenting rejection based on the claims of US Patent 11,345,596 set forth in paragraph 5 of the previous Office action mailed 05/13/2026 is no longer applicable and thus, withdrawn because the applicants submitted a terminal disclaimer on 09/14/2026. See also Page 5 of Applicants’ Remarks.
6. Upon consideration in light of applicants’ arguments provided at pages 3-5 of their Remarks, the 102 and 103 rejections based on WO 2018/180797 and IWAKUNI et al. of record as set forth in paragraphs 6 and 7 of the previous Office action mailed 05/13/2026 are no longer applicable and thus, withdrawn.
Correspondence
7. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
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