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 amendment filed 03/10/2026 has been entered. Claims 1-11 remain pending in the application. Applicant's amendments to the claims have overcome the objection, the 112(d) rejection, and each 112(b) rejection previously set forth in the non-final office action mailed on 01/12/2026, thus rendering the objection, the 112(d) rejection upon claim 1, and each and every 112(b) rejection upon claims 1-11 moot. Furthermore, the Examiner has provided a corrected Notice of References Cited (PTO-892) to reflect the erroneous citation now properly cited.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura, JP 2020033224 A, in view of Nanomicronspheres “Understanding the Interaction Between Molybdate and Silica Particles: Implications for Material Science”, first indexed online January 2016, last accessed online on December 22, 2025, herein referred to as Matsumura and Nanomicronspheres, respectively. Danks et al. The evolution of “sol-gel” chemistry as a technique for materials synthesis, Mater. Horiz., 2016, 3, 91-112 is used as evidence for claim 11. Nanomicronspheres and Danks were cited in the Notice of References Cited by the examiner on 1/12/2026.
Regarding claim 1, Matsumura teaches a manufacturing method of silica particles (method for producing the positively charged hydrophobic spherical silica particles, 0015), comprising: forming a coating structure consisting of a reaction product of a trifunctional silane compound on a surface of silica base particles (methyltrimethoxysilane was added dropwise to treat the surfaces of the silica particles, 0081); adding at least one compound selected from the group consisting of ammonia and an amine to a suspension including the silica base particles having the coating structure consisting of the reaction product of the trifunctional silane compound, water and an alcohol (methanol 989.5g, water 135.5g and 28% ammonium hydroxide 66.5g were added and mixed, 0080, to which the treated silica particles were added, 0081) to form a reaction solution, wherein a total amount of the ammonia and the amine with respect to a total mass of the reaction solution is 0.2% by mass or more and 4.5% by mass or less (Example 1, 0080); and removing the water and the alcohol from the reaction solution (“the solvent in this dispersion was removed by distillation at 130°C under reduced pressure (6,650 Pa) to obtain 186 g of hydrophobic spherical silica particles,” 0082).
Regarding the claimed range of a total amount of ammonia and amine falling between 0.2% and 4.5% by mass of the total reaction solution, Example 1 of Matsumura discloses that 66.5 g of ammonium hydroxide, NH4OH, is added (0080); this yields a value of approximately 2.5% by mass, falling within the range of 0.2% to 4.5% by mass required by the instant claim. The calculations are as follows; values taken from paragraphs 0080-0082.
989.5 g (methanol, Step A1) + 135.5 g (water, Step A1) + 66.5 g (NH4OH, Step A1) + 436.5 g (TMOS, Step A1) + 4.4 g (MTMS, Step A2) - 1021 g (methanol+water, Step A3) + 138.4 g (HMDS, Step A3) = 749.8 g
66.5 g * 0.28 m/m of aqueous NH4OH = 18.62 g NH3
18.62/749.8 ≈ 2.5%
Matsumura does not teach adding a nitrogen element-containing compound containing a molybdenum element, to the suspension. Matsumura does disclose that surface-treating hydrophobic silica particles with a positive charge control agent is known in the art (0004), specifically the quaternary ammonium salt TP-415, a molybdenum-containing compound (0115).
However, Nanomicronspheres discloses that the interaction of molybdenum with silica particles has distinct effects on the surface charge properties of the particles (p. 5, “Fundamental Chemistry of Interaction”).
It would therefore be obvious to one skilled in the art before the effective filing date of the invention to modify the invention disclosed by Matsumura by including the charge control agent TP-415 in the reaction solution, in order to improve the electrostatic interaction between the silica surface and the molybdate ion. One would be motivated to do so to treat the surface of the hydrophobized silica particles obtained in the invention of Matsumura with molybdate ions, in order to control the surface charge of the silica particles, as Nanomicronspheres teaches this can be controlled (p. 5, “Fundamental Chemistry of Interaction”). It is noted that Matsumura does not teach a drying step between each of the additive steps in the method; all compounds are added to the same reaction solution. It would therefore be obvious to one skilled in the art to add the nitrogen element-containing compound containing a molybdenum element into the reaction solution, arriving at the claimed invention.
Regarding claim 2, Matsumura teaches in Example 1 the addition of 66.5 g of 28% ammonium hydroxide (0080); this falls within the group consisting of at least one compound of ammonia, dimethylamine, and diethylamine, as required by the instant claim. This yields a value of approximately 2.5% by mass, falling within the range of 0.2% to 4.5% by mass required by the instant claim. See the calculations provided in claim 1 above.
Regarding claim 3, Matsumura teaches the compound TP-415 (0115); this is a quaternary ammonium salt containing a molybdenum element.
Regarding claim 4, Matsumura teaches the compound TP-415 (0115); this is a compound with the CAS registry number 117342-25-3.
Regarding claim 5, Matsumura teaches methyltrimethoxysilane (MTMS) (0081); this has the formula RSiX3, where R is a methyl group, and the three X’s are methoxy groups. This falls within the definition of the instant claim where R represents a hydrocarbon group having 1 or more and 6 or less carbon atoms, and three X’s each independently represent a hydroxyl group or a hydrolyzable group.
Regarding claim 6, Matsumura teaches MTMS; this meets the structure required by the instant claim, wherein the three X’s are represented by methoxy groups.
Regarding claim 7, Matsumura and Nanomicronspheres do not teach the content of the nitrogen element-containing compound containing a molybdenum element in the reaction solution.
However, the content in parts by mass of the molybdenum with respect to the silica particles having the coating structure is a result effective parameter that a person having ordinary skill in the art would naturally optimize. It would have been customary before the effective filing date of the claimed invention for an artisan of ordinary skill to determine the optimal amount of each ingredient, i.e. the parts by mass of the molybdenum-containing compound and the coated silica particles, needed to achieve the desired results. It is noted that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8, Matsumura teaches the alcohol having the identity of methanol (Example 1).
Regarding claim 9, Matsumura teaches 989.5 g of methanol in Step A1 (0080); this is approximately 61% by mass of the original reaction solution (989.5/(989.5+135.5+66.5+436.5) = 0.6078 ≈ 61%). While the exact value of the methanol content by mass is not disclosed in view of the full contents of the reaction solution, Matsumura further discloses that the ratio of the hydrophilic solvent, such as methanol, to water is preferably 0.5 to 10 (0043). Further, Matsumura teaches that this ratio is related to the affinity between the silica particles and the mixed solvent (0043). As the affinity between the hydrophobized silica particles and the mixed solvent is a variable (0043) that can be modified, among others, by adjusting the amount of alcohol present in the reaction solution, with affinity both increasing/decreasing as the amount of alcohol is increased/decreased, the precise mass percent of alcohol in the reaction solution would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed range of mass percent of alcohol cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized, by routine experimentation, the amount of alcohol in the invention of Matsumura and Nanomicronspheres, as applied to claim 1, to obtain the desired balance between the affinity between the silica particles and the mixed solvent as taught by Matsumura (0043) (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). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). It would therefore be obvious to one skilled in the art before the effective filing date of the claimed invention to select a value for the content of water by mass in the reaction solution near the value of 135.5 + (66.5*0.72) g = 183.38 g taught by Matsumura, modify the ratio of hydrophilic solvent to water through routine optimization, and arrive at the claimed invention with reasonable expectation of success.
Regarding claim 10, Matsumura teaches the reaction solution as discussed for claim 1 above (0080, 0081). Matsumura also teaches that this solution is stirred for 12 hours (0081) and that this step immediately follows the dropwise addition step which is maintained at 25°C. Since this temperature is standard room temperature and Matsumura does not teach that the temperature is changed during the stirring over 12 hours, it one of ordinary skill in the art would reasonably conclude that the stirring is maintained at the same temperature of 25°C. The duration of 12 hours falls within the claimed range of 1 hour or more, and the temperature of 25°C falls within the claimed range of 25°C or higher and 65°C or lower, thus arriving at the claimed invention.
Regarding claim 11, Matsumura teaches that the silica particles which are further treated by coating are obtained by the step (A1) which is a step of hydrolyzing and condensing a 4-functional silane compound (0038) in a procedure analogous to sol-gel granulation, as evidenced by Danks (1.1 ‘Sol’ and ‘gel’, “hydrolysis and condensation” to form a colloidal suspension of “particles dispersed in a medium”). It is noted that the process produces a dispersion of silica particles, where the term dispersion necessarily consists of silica granules.
Response to Arguments
Applicant's arguments filed on 03/10/2026 regarding the 103 rejections of claims 1-11 have been fully considered but they are not persuasive. In response to applicant's arguments against the references of Matsumura and Nanomicronspheres, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case applicant has asserted that Matsumura merely teaches attaching hexamethyldisilazane to the treated silica particles in Step (A2), and fails to suggest adding hexamethyldisilazane and at least one compound selected from ammonia and an amine to the silica particles. However, Matsumura discloses the addition of 66.5 g of 25% aqueous ammonia to the reaction solution in step (A1) (0080), and does not teach a removal of the ammonia in step (A2). Therefore Matsumura teaches the adding of the ammonia to the reaction solution. The combination of teachings of Matsumura and Nanomicronspheres leads one of ordinary skill in the art to arrive at the invention, wherein ammonia is present, with a nitrogen element-containing compound containing a molybdenum element, in the reaction solution, and to this point applicant has only asserted that Nanomicronspheres does not cure the deficiencies of Matsumura but has not provided evidence to support the argument that the examiner’s conclusion of obviousness based on the findings of fact is allegedly in error. This argument is therefore not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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