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 Arguments
Applicant's arguments filed 7/24/2025 have been fully considered but they are not persuasive.
Applicant argues that according to the specification, the two-phase bicontinuous silica obtained by the method according to JP201419591 is crystalline silica. This argument is unpersuasive since as presented in the rejection, JP201419591 discloses a method where the silica structure is prepared by an identical process comprising firing a mixture of precursor amorphous silica and a ratio of molybdenum compound in the mixture is in a range of 5 to 70% by mass based on the precursor silica. Since the processes are otherwise identical, the Office maintains that JP201419591 discloses an amorphous silica when the ratio is 5% by mass.
Applicant further argues that JP201419591 claim 1 includes the limitation of claim 7, this argument is unpersuasive since JP201419591 discloses where the co-continuous silica structure is spherical (see [0020]) and where the size is micron sized or larger (i.e., ≥1 µm).
Regarding Applicant’s arguments about the claimed sphericity, the Office notes that JP201419591 discloses that the shape is not particularly limited and is selected according to the purpose (see [0020]). Sakai (JP2017/036221) is presently cited for teaching that silica particles having a sphericity of 0.7 or more and average particle diameter from 0.05 µm to 20 µm are preferable for the purpose of using in cosmetics for blocking ultraviolet rays and near infrared rays (see DESCRIPTION-OF-EMBODIMENTS, <Metal oxide particles>).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 depends on claim 1 which limits the silica structure to where the d50 is 1 to 10 µm. Therefore, claim 15 does not further limit the structure since it broadens the range for d50. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-3, 6, 8-9, and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP201419591 submitted in the IDS filed 4/4/2023).
Regarding claim 1, JP201419591 discloses a two-phase co-continuous silica comprising a silica constituted of a Q4 bond and wherein the content of molybdenum oxide is 1% by mass or less; the air phase has a diameter of 50 to 1,000 nm (see [0012], [0033], and [0030]). JP201419591 does not disclose that the two-phase co-continuous silica is amorphous. However, JP201419591 discloses a silica produced by preparing a mixture of precursor amorphous silica (see [0018]) and molybdenum compound in a 5 to 70% by mass based on the precursor silica; and firing at a temperature of 600 to 1300°C (See [0028]). JP201419591 further discloses where the co-continuous silica structure is a spherical particle having a size of micron size or larger (i.e., ≥1 µm) (see [0020-0021]).
The only difference between the present invention is that the mixture comprises molybdenum compound in an amount that “is preferably 15% by mass or less” so that “when the ratio of the molybdenum compound is within the preferable range the phase containing silica is likely to be amorphous. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica according to JP 201419591 where the molybdenum compound is in any range overlapping with 5% to 70% including 15% or less and including 5%.
Furthermore, it has been held that inherent features need not be recognized at the relevant time. See MPEP 2112.II. Here, because JP201419591 discloses a silica produced where the molybdenum compound is used in the mixture in a range of 5 to 15%, one of ordinary skill in the art would reasonably expect amorphous structure to necessarily follow since the silica is produced by identical process.
Regarding claim 2, JP201419591 discloses where the silica forms a three-dimensional network formed form a nanowire having a thickness of 5 to 1,000 nm (see [0031]).
Regarding claim 3, JP201419591 discloses where the specific surface area is 1-200 m2/g (see [0032]).
Regarding claim 6, JP201419591 discloses where the content of molybdenum oxide is less than 1% (see [0033]).
Regarding claim 8, JP201419591 discloses a method for preparing a bicontinuous silica produced by mixing a precursor amorphous silica (X) (see [0018]) and molybdenum compound (Y) in a 5 to 70% by mass based on the precursor silica to prepare a mixture (A); and firing the mixture (A) at a temperature of 600 to 1300°C (See [0028]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica according to JP 201419591 where the molybdenum compound is in any range overlapping with 5% to 70% including 5% or less.
Regarding claim 9, JP201419591 discloses a method for preparing a bicontinuous silica produced by mixing a precursor amorphous silica (X) (see [0018]) and molybdenum compound (Y) in a 5 to 70% by mass based on the precursor silica to prepare a mixture (A); and firing the mixture (A) at a temperature of 600 to 1300°C (See [0028]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica according to JP 201419591 where the molybdenum compound is in any range overlapping with 5% to 70% including 5% to 15%.
Regarding claim 11, JP201419591 discloses a method for preparing a bicontinuous silica produced by mixing a precursor amorphous silica (X) (see [0018]) and molybdenum compound (Y) in a 5 to 70% by mass based on the precursor silica to prepare a mixture (A); and firing the mixture (A) at a temperature of 600 to 1300°C (See [0028]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica according to JP 201419591 where the molybdenum compound is in any range overlapping with 5% to 70% including 5% to 15%.
JP201419591 discloses a two-phase co-continuous silica comprising a silica constituted of a Q4 bond and wherein the content of molybdenum oxide is 1% by mass or less; the air phase has a diameter of 50 to 1,000 nm (see [0012], [0033], and [0030]). JP201419591 does not disclose that the two-phase co-continuous silica is amorphous. However, JP201419591 discloses a silica produced by preparing a mixture of precursor amorphous silica (see [0018]) and molybdenum compound in a 5 to 70% by mass based on the precursor silica; and firing at a temperature of 600 to 1300°C (See [0028]). JP201419591 further discloses where the co-continuous silica structure is a spherical particle having a size of micron size or larger (i.e., ≥1 µm) (see [0020-0021]).
The only difference between the present invention is that the mixture comprises molybdenum compound in an amount that “is preferably 15% by mass or less” so that “when the ratio of the molybdenum compound is within the preferable range the phase containing silica is likely to be amorphous. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica according to JP 201419591 where the molybdenum compound is in any range overlapping with 5% to 70% including 15% or less.
Furthermore, it has been held that inherent features need not be recognized at the relevant time. See MPEP 2112.II. Here, because JP201419591 discloses a silica produced where the molybdenum compound is used in the mixture in a range of 5 to 15%, one of ordinary skill in the art would reasonably expect amorphous structure to necessarily follow since the silica is produced by identical process.
Regarding claim 12, JP201419591 discloses where the silica forms a three-dimensional network formed form a nanowire having a thickness of 5 to 1,000 nm (see [0031]).
Regarding claim 13, JP201419591 discloses where the specific surface area is 1-200 m2/g (see [0032]).
Regarding claim 14, JP201419591 discloses where the content of molybdenum oxide is less than 1% (see [0033]).
Regarding claim 15, JP201419591 further discloses where the co-continuous silica structure is a spherical particle having a size of micron size or larger (i.e., ≥1 µm) (see [0020-0021]).
Claim(s) 10 and 16-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP201419591 as applied to claims 1 or 11 and in further view of Sakai et al (JP 2017036221A where citations are from the machine translation provided by the Examiner).
As applied to claim 1, JP201419591 discloses a two-phase bicontinuous silica structure comprising all of the limitations required by the claim.
As applied to claim 11, JP201419591 discloses a two-phase bicontinuous silica structure comprising all of the limitations required by the claim.
Regarding claim 10, JP201419591 discloses the shape of the particle is not limited and is selected to have an appropriate shape according to the purpose (see [0020]). JP201419591 further discloses that the total size of the silica is not limited (see [0021]). JP 201419591 does not disclose a sphericity of 0.78-0.81.
Sakai discloses particles for providing UV ray blocking in cosmetics containing metal oxides where the metal oxide is preferable where the shape is spherical having a sphericity of 0.7 or more and the average particle diameter is within a range of 0.05 µm to 20 µm (see Abstract and <Metal oxide particles>). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica particles as disclosed by JP201419591 where the sphericity is in any range overlapping with 0.7 or higher as disclosed by Sakai so that the particles are suitable for using as a UV ray blocker in cosmetics.
Regarding claim 16, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica particles as disclosed by JP201419591 where the sphericity is in any range overlapping with 0.7 or higher as disclosed by Sakai so that the particles are suitable for using as a UV ray blocker in cosmetics.
Regarding claims 17-19, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica particles as disclosed by JP201419591 where the sphericity is in any range overlapping with 0.7 or higher and the average particle diameter is in any range overlapping with 0.05 to 20 µm as disclosed by Sakai so that the particles are suitable for using as a UV ray blocker in cosmetics.
Regarding claims 20-23, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the silica particles as disclosed by JP201419591 where the average particle diameter is in any range overlapping with 0.05 to 20 µm as disclosed by Sakai including the claimed average particle diameters so that the particles are suitable for using as a UV ray blocker in cosmetics.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738