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 Group II in the reply filed on 12/4/25 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9, 10, 13, 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 9 and 10 describing a mixing being performed at a certain mass ratio, but it is unclear what this is referring to. For examination purposes, this feature will be treated as describing the solvent and zirconia content in the slurry. It is unclear which would have the first value, but a 1:1 ratio from Claim 10 will be relied upon to treat Claim 9 as well.
Claim 13, line 2 describes that the surface-treated zirconia powder has a content of 5—75wt%, but it is unclear what this relates to. This will be treated as the composition of the synthesizing slurry.
Claim 18 describes a list of compositions, but it is unclear what these are. An internet search produced various products that did not list as “agglomeration inhibitor”. The specification lists the compounds, but does not further explain the source of the product, the manufacturer or other potentially defining features of these products. For examination purposes, this feature will be treated as agglomeration inhibitors until further clarified.
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) 5, 6, 7, 8, 12, 14, 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (JP 2019/069885).
As to Claims 5 and 12, Toda describes a method of making a surface-treated zirconium oxide nanoparticle (abstract). The surface-treatment solution is made up on a hydroxyl-group containing aliphatic carboxylic acid and an aryl-group containing carboxylic acid (page 2, second to last para).
As to the R-Y structure, where R comprises a large steric hinderance group and the Y comprises a group capable of interacting with zirconia, the specification of this application explains that steric hindrance groups can include: benzene rings, naphthalene rings, cycloalkanes (see Published Specification, para. 21). Therefore, an aryl-group meets this feature. The specification of this application explains that the group capable of interacting with zirconia, group Y, can include those listed in para. 25 of the specification, which includes: carboxyl, hydroxyl, alkyl, alkoxy, epoxy, carbonyl, amino, hydrogen and halogen (para. 25 of the published specification). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the carboxylic acid group attached to the aryl group of Toda meets the carboxylic acid of the Claims.
As to Claim 6, Toda explains that the surface treatment agent amount can range from 5-30 mass % (page 3, para. 5).
As to Claims 7 and 8, Toda explains that examples of organic solvents include propylene glycol monomethyl ether acetate (page 5, lines 28-31).
As to Claims 14, 15 and 16, Toda teaches use of an organic solvent, which can include methyl ethyl ketone (page 5, para. 5).
Claim(s) 9, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda as applied to claim 7 above, and further in view of Tomita (JP 2017/210385).
Toda does not describe the ratio of the mixing components.
Tomita describes a method of manufacturing a zirconia particle that is surface modified (abstract). The process involves dispersing zirconia particles in an organic solvent (see page 2, last para.) followed by adding a surface modified to the mixture (page 3, para. 1). The solvent is then removed to produce the zirconia product (page 3, para. 2). The surface treatment agent can include a compound that contains a carboxylic acid and another compound (see page 4, “surface treatment agent”, para. 1, 2, 5). The solvent is in the mixture from 50 mass % or more (see Claim, step D, para. 3). The zirconia particle (inorganic particle) is in the mixture from 1-50 mass % (see page 5, para. 5). The amount of organic acid used should not be too low because this creates low dispersibility and if it is too high, the fluidity of the inorganic particles is not improved and decrease the product’s refractive index (see page 4, last para).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a ratio of solvent that overlaps a 1:1 ratio, as taught by Tomita for use in the synthesizing slurry of Toda because this ratio is effective for making a zirconia product.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda as applied to claim 5 above, and further in view of Kudo (WO 2019026809).
Toda describes removal of solvent from the precipitate (see examples), but Toda does not state that the solvent is removed using lyophilization.
Kudo describes a method of making a zirconia composition (abstract). The zirconia particles are treated with a surface treatment agent (page 10, para. 2). The method of making can include solvents (page 12, para. 2). Kudo explains that there is no restriction limiting the method used to dry the particles (page 13, para. 2). These include spray drying, supercritical drying or lyophilization are all effective means to remove the particles from solution (page 13, para. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove the solvent using lyophilization, as taught by Kudo for use with the process of Today because this is one of the several known means to remove the solvent solution.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda as applied to claim 12 above, and further in view of Morita (WO 2016/035689).
Toda doesn’t describe how much the surface-modified zirconia powder is in the solution.
Morita describes a method of making a zirconium oxide particle (title). The method disperses the zirconium oxide in a solvent solution (abstract). The zirconium oxide is surface treated (abstract) using a surface treatment agent (“Advantageous—Effects”, para. 1). The mixture used to make the zirconium oxide-surface treated particle contains a slurry of zirconium oxide, the surface treatment solution and solvent (see Examples 1, 2, 3, 4). As to the amount, Morita explains that the dispersion medium excluding methanol and ethanol used can range from 20 weight % or more (page 4, para. 4). Morita explains that the methanol solvent id distilled using heat (see example 1, para. 2).
Therefore, since the solution contains 20weight % or more of solvent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the surface-modified zirconia, which is the rest of the solution, would range from 80wt% or less.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the surface-modified zirconia compound to range from 80wt % and a solvent ranging from 20wt% or less, as taught by Morita for use with Toda because these ratios are known to be effective in making the surface-modified zirconia product.
Claim(s) 17, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda as applied to claim 12 above, and further in view of Khan et al. “Enhanced Antimicrobial Activity of Biofunctionalized Zirconia Nanoparticles”.
Toda describes use of stabilizing agents (see page 2, second to last para), but does not state that these stabilizing agents have anti-agglomeration impact.
Khan describes a method of making a surface functionalized zirconium oxide nanoparticle (abstract). The reference explains that these nanoparticles are stabilized using stabilizing agents and that they bind to the surface of the nanoparticles and effectively inhibit aggregation of these particles (Introduction, right col, lines 7-12).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the stabilizing agent of Khan and Toda in order to inhibit zirconium oxide particle aggregation, as taught by Khan.
Conclusion
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 February 20, 2026