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 .
Claim Status
Claim 5 is amended to include former Claims 7 and 9 with clarification to the ratios and what is being considered in the mixtures. Claim 12 is amended to include former Claim 13.
Response to Arguments
Applicant's arguments filed 6/1/26 have been fully considered but they are not persuasive in-part and persuasive in-part.
The remarks argue the following:
The Office Action admits that Toda fails to disclose the technical feature of claim 5 as amended herein to include: the mixing is performed at a mass ratio of the aqueous zirconia solution to the organic solvent of 1:0.5-2.
The above-mentioned distinguishing feature in amended claim 5 resolves the technical problem of a high degree of agglomeration, poor stability, and poor dispersion performance of zirconia powder.
Specifically, in the technical solution of the surface-treated zirconia powder provided by the present application, a bulky steric hindrance group is introduced to the zirconia surface via a surface treatment agent, and the mass ratio of the aqueous zirconia solution to the organic solvent is controlled to be 1:0.5-2. Utilizing the steric hindrance effect, aggregation of zirconia particles is suppressed, resulting in the surface-treated zirconia powder having good dispersibility and good anti-aggregation effect.
When the mass ratio of the aqueous zirconia solution to the organic solvent is 1:0.5-2, the solvent ratio within this range provides better dissolution and dispersion effects for other substances (such as particles and surface treatment agents) because the polarity and solubility parameters of the solvent in this ratio better match those of the particles and surface treatment agents. Ratios less than 0.5 or greater than 2 result in poor matching and lower solubility of the surface treatment agent, thereby leading to low grafting efficiency and grafting amount, which adversely affects dispersion application. Furthermore, if the content of organic solvent is too high, environmental friendliness and mass producibility are both poor, which is detrimental to industrial production.
The Office Action admits that Toda fails to disclose the technical feature of claim 5 as amended herein to include: mixing performed at a mass ratio of the aqueous zirconia solution to the organic solvent of 1:0.5-2, but contends that it would have been obvious 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 Tomita.
Applicant respectfully submits that Tomita teaches away from the technical features of
independent claim 5 as amended including the following:
(1) an aqueous zirconia solution; and
(2) a mass ratio of the aqueous zirconia solution to the organic solvent of 1:0.5-2
The base dispersion used in Tomita is an organic solvent dispersion of zirconia, specifically, a toluene/methanol dispersion or a methanol dispersion (see Examples 1-3), not the "aqueous zirconia solution" described in the present application. Tomita's Comparative Example 1 clearly illustrates that using an aqueous dispersion results in poor dispersibility. For example, Comparative Example 1 of Tomita uses an aqueous dispersion of zirconia but discloses that dispersibility in n-butyl acrylate (BA)
and methyl methacrylate (MMA) is poor (Tomita, paragraph [0077], machine translation). Thus, Tomita actually teaches away from using water as a dispersion medium, whereas the present application is precisely based on an aqueous zirconia solution. A person skilled in the art upon reading the Tomita disclosure would not be motivated to use water as a dispersion medium and therefore would not arrive at the aqueous zirconia solution required by pending claim 5.
Furthermore, Tomita explicitly teaches using high proportions of organic solvent in the dispersion medium such as 70 wt.% or more, more preferably 80 wt.% or more (Tomita, paragraph [0017], machine translation). Tomita discloses that the higher the proportion of the organic solvent in the dispersion medium, the lower the polarity of the dispersion medium, and the more easily the surface treatment agent acts on the inorganic nanoparticles (Tomita, paragraph [0017], machine translation). This indicates that Tomita's technical teaching is to increase the proportion of the organic solvent as much as possible.
The remarks are respectfully not persuasive. The term “bulky steric hindrance group” is too broad and not specific enough to be limiting because it is unclear how big the group should be in order to become a steric hindrance.
As to what Toda is missing, Toda describes use of organic solvents and water (see page 3, para. 4 from bottom, which describes adding zirconium oxide nanoparticles and water and other compounds, including the surface treatment agent). Therefore, Tomita is limited to just teaching the ratios.
As to the ratios of Tomita, the remarks argue ranges that were not cited in the office action. Therefore, the office action did not rely on the embodiments argued in the remarks.
As to the reason to combine, since Toda does not recite ratio amounts, it would be obvious for one skilled in the art to look towards ratios used in other references that would be effective to make the same surface-treated zirconia product.
Next, the remarks argue the following:
The Office acknowledges that Toda fails to disclose the technical feature of claim 12 as amended herein to include: the surface-treated zirconia powder has a content of 50 wt.% to 75 wt.% based on the zirconia dispersion.
The above-mentioned distinguishing feature in amended claim 12 resolves the technical problem present in the prior art as disclosed in Morita concerning when the zirconia content exceeds 50 wt.%, the viscosity of the aqueous zirconia particle dispersion increases, eventually losing fluidity and undergoing gelation (See Morita, paragraph [0102], machine translation).
Specifically, in the technical solution of the zirconia dispersion obtained in the present application, the zirconia dispersion has the surprising distinguishing features of a particle agglomeration degree of 0.2-3, a rate of change in refractive index of less than 1% after being left to stand for 12 months at room temperature without any light, uniform dispersibility, high stability, good redissolution effect, and a small agglomeration degree.
The Office Action admits that Toda fails to disclose the technical feature of claim 12 as amended herein to include: the surface-treated zirconia powder has a content of 50 wt.% to 75 wt.% based on the zirconia dispersion but contends that Morita discloses a method that disperses zirconium oxide in a solvent solution where the dispersion medium can be 20 wt. % or more. The Office Action contends that since the amount of dispersion medium other than methanol and ethanol can be 20 wt. % or more, it would have been obvious that the surface-modified zirconia, which is the rest of the solution, would be 80 wt. % or less.
Applicant respectfully submits that the Office Action's factual finding in Morita is unsupported by evidence; and the Morita teaches away from the technical features of claim 12 as amended including the surface-treated zirconia powder having a content of 50 wt.% to 75 wt.% based on the zirconia dispersion upon careful review of the Morita disclosure, Morita nowhere teaches that the amount of dispersion medium can be 20 wt. % or more. On the contrary, all occurrences of "20 wt. %" in Morita refer to the content of zirconia particles in the dispersion, not the content of the dispersion medium (solvent). Specifically, reference can be made to paragraphs such as the abstract, [0015], [0032], [0070], and [0101] of Morita, which all recite a zirconium oxide(zirconia) particle content of 20 wt. % or more.
Specific citations in Morita include:
--See Citations in Remarks--
Applicant respectfully asserts that the zirconium oxide content of 20 wt. % or more in
Morita has erroneously been interpreted as a dispersion medium content 20 wt. % or more, and based on this, the Office Action derived the conclusion of Morita disclosing a zirconia content 80 wt. % or less. This inference is based on an erroneous factual premise and is incorrect. As such, Morita does not teach or reasonably suggest the technical feature of claim 12 as amended which include "the surface-treated zirconia powder has a content of 50 wt.% to 75 wt.% based on the zirconia dispersion".
The remarks are respectfully persuasive and therefore Claim 13 is marked as allowable below.
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.
Claim 18 is 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.
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, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda (JP 2019/069885) and in view of Tomita (JP 2017/210385).
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 the aqueous feature, Toda teaches that the synthesis mixture contains zirconium oxide nanoparticles, surface treatment agent and organic solvents (page 3, para. 4 and 5 from the bottom).
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.
As to Claim 6, Toda explains that the surface treatment agent amount can range from 5-30 mass % (page 3, para. 5).
As to Claim 8, Toda explains that examples of organic solvents include propylene glycol monomethyl ether acetate (page 5, lines 28-31).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toda and Tomita as applied to claim 5 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 Toda and 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 and Tomita 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 Toda and Tomita because this is one of the several known means to remove the solvent solution.
Allowable Subject Matter
Claim 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: Morita describes 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).
Morita does not disclose that the solution contains 50-75wt% of zirconia.
Claims 14, 15, 16, 17 and 18 depend from Claim 12.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 SHENG HAN DAVIS whose telephone number is (571)270-5823. The examiner can normally be reached 9-5:30.
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, Fung Coris can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHENG H DAVIS/Primary Examiner, Art Unit 1732 July 2, 2026
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