DETAILED ACTION
This is an Office action based on application number 18/281,918 filed 13 September 2023, which is a national stage entry of PCT/JP2022/018000 filed 18 April 2022, which claims priority to JP2021-073614 filed 23 April 2021. Claims 1-15 are pending.
Amendments to the claims, filed 13 September 2023, have been entered into the above-identified application.
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 Group I, claims 1-12 in the reply filed on 9 July 2026 is acknowledged.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed 9 July 2026.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fujioka et al. (WIPO International Publication No. WO 2019/177004 A1 with citations taken from US Patent Application Publication No. US 2021/0009432 A1) (Fujioka) in view of Sakai et al. (US Patent No. 5,750,258) (Sakai).
Regarding instant claims 1-6 and 9:
Fujioka discloses a surface-treated silica-based composite oxide powder obtained by surface-treating the silica-based composite oxide powder with a silane coupling agent (Claim 11).
Fujioka further discloses that the silane coupling agents are inclusive of aliphatic silane coupling agents having a (meth)acryloyl group (paragraph [0040]).
Said silane coupling agents having a (meth)acryloyl group provide the double bonds contained in the surface-treated inorganic powder.
Fujioka teaches that the surface treatment gives good fluidity to and reduce the water absorbency of said powder (paragraph [0038]). Fujioka teaches that if the powders are used as a filler for a resin, the absorbed moisture may generate bubbles when heated, which causes a decrease in the yield (paragraph [0035]).
Fujioka does not explicitly disclose the amount of double bonds contained in the surface-treated inorganic powder D1 and the carbon content per unit surface area recited by the claims.
Since the instant specification is silent to unexpected results, the specific amount of surface treatment/amount of double bonds present in the surface treated inorganic powder is not considered to confer patentability to the claims. As the fluidity and moisture absorbing reduction provided by the surface treatment are variables that can be modified, among others, by adjusting the amount of silane coupling agent surface treatment, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of surface treatment in Fujioka to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Fujioka does not disclose the claimed ratio of D1/D2, wherein D2 is the amount of double bonds contained in the washed powder. Fujioka does not a difference (C1-C2) between a carbon amount (C1) of the surface-treated inorganic powder and a carbon amount C2 of the washed powder.
However, Sakai discloses crosslinked resin-coated silica fine particles (Title).
Sakai further discloses that the resin coatings are formed through a vinyl-containing silane coupling agent (Claim 1).
Sakai discloses that crosslinked coatings can be formed to have high adhesion such that they are substantially not peeled off from the silica fine particles with the crosslinked- resin-coated silica fine particles are dispersed in a dispersing medium by ultrasonic vibration (col. 5, line 65 to col. 6, line 8).
Sakai discloses that said dispersing medium is inclusive of methanol (col. 18, lines 7-8).
The disclosure of the resin coating “substantially not peeled off” is construed to encompass embodiments wherein the amount of coating before and after ultrasonic treatment is substantially the same (i.e., D1/D2 is substantially 1 and the difference C1-C2 is 0 ppm).
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art combination before him or her, to crosslink the surface treatment of Fujioka as taught by Sakai such that the coating has high adhesion to the particles and are not peeled off during ultrasonic vibration. The motivation for doing so would have been to ensure that the resin coatings adhere strongly such that the composite particles can maintain their beneficial properties.
While there is no disclosure in the prior art combination that the content D2 is measured after a washing at the specific properties, absent evidence of criticality regarding how the content D2 is measured and given that the amount falls within the range presently claimed, it is the examiner's position that the prior art meets the requirement of the instant claim.
Therefore, it would have been obvious to combine Sakai with Fujioka to obtain the invention as specified by the instant claims.
Regarding instant claim 7:
The prior art combination does not explicitly disclose the recited 13C CP MAS NMR intensity ratio. However, Applicant’s original disclosure teaches that the claimed intensity ratio indicates that the double bonds introduced by the silane coupling agent are preset in a large number (See Specification at paragraph [0026]). Therefore, one of ordinary skill in the art would readily conclude that the claimed intensity ratio is a function of the amount of silane coupling agent.
Since the instant specification is silent to unexpected results, the specific amount of surface treatment/amount of double bonds present in the surface treated inorganic powder is not considered to confer patentability to the claims. As the fluidity and moisture absorbing reduction provided by the surface treatment are variables that can be modified, among others, by adjusting the amount of silane coupling agent surface treatment, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of surface treatment in Fujioka to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 8:
Fujioka further discloses that the sphericity of the particles is 0.8 or more (paragraph [0034]).
Regarding instant claim 10:
Fujioka further discloses that silica, titania, and zirconia are combined to produce a composite oxide (paragraph [0017]), and that the proportion of titanium or zirconium to the total amount of metal is 50 mol % or less (paragraph [0018]), i.e., the amount of silica is 50 mol % or greater, which includes range recited by the claims. However, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 11:
Fujioka further discloses that the composite oxide powder has a meant particle diameter in the range of 0.05 μm to 2 μm (paragraph [0020]). Fujioka further discloses that the proportion of particles having a diameter of 5 μm or more is 10 ppm or less (paragraph [0021]). Such a disclosure is construed to include the values recited by the claim. However, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 12:
The prior art does not explicitly disclose an amount of polymerization inhibitor necessary for the composite oxide powder to perform its intended purpose; therefore, the prior art combination is construed to encompass embodiments wherein the composite oxide powder comprises 0 ppm of a polymerization inhibitor, which falls within the scope of less than 50 ppm recited by the claim.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fujioka in view of Sakai as applied to claim1 above, and further in view of Fujioka et al. (WIPO International Publication No. WO 2019/044929 A1 with citations taken from English language equivalent US Patent Application Publication No. US 2020/0199371 A1) (Fujioka 371).
Regarding instant claim 12:
Fujioka in view of Sakai discloses the surface-treated composite oxide powder as cited in the rejection of claim 1, above.
Fujioka in view of Sakai, further, does not disclose an amount of polymerization initiator necessary for the surface-treated composite oxide powder to perform its intended use; therefore, the prior art combination is construed to encompass embodiments wherein the composite oxide powder comprises 0 ppm of a polymerization inhibitor
Fujioka in view of Sakai does not disclose the interpretation of the claim wherein polymerization inhibitor is necessarily present, but in amounts less than 10 ppm.
However, Fujioka 371 discloses surface-treated sol-gel silica whose surfaces are modified by surface treatment agents inclusive of silane coupling agents having (meth)acrylic groups (Claims 1 and 3-4).
Fujioka 371 further discloses that additives inclusive of a polymerization inhibitor may be used as necessary (paragraph [0195]).
The disclosure “used as necessary” suggests to one of ordinary skill in the art that the surface-treated sol-gel silica may include an amount of polymerization inhibitor greater than or equal to 0 parts, i.e., necessarily including the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claims, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the polymerization inhibitor of Fujioka 371 into the surface-treated composite-oxide powder of Fujioka in view of Sakai. The motivation for doing so would have been that Fujioka establishes that polymerization inhibitors are known additives to surface-treated silica powders that the skilled artisan may add as necessary. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Therefore, it would have been obvious to combine Fujioka 371 with Fujioka in view of Sakai to obtain the invention as specified by the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 07/23/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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