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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group 1, claims 1-13 in the reply filed on 01/26/2026 is acknowledged. Accordingly, claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-13 are currently under examination on the merits.
Claim Objections
Claims 5 and 6 are objected to because of the following informalities: “content [mass%]” should read “content percentage by mass”. Appropriate correction is required.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Uematsu et al (US 2019/0202711, ‘711 hereafter) in view of Sawada et al (US 2001/0010867, of record, ‘867 hereafter).
Regarding claims 1-5 and 7-13, ‘711 discloses a sol liquid and a coating film obtained from the same ([0023]-[0044]), wherein the sol liquid comprises a metal alkoxide condensate with a particle size in a preferred range of 3 to 50 nm satisfying present claim 10 ([0023]-[0028]); an α-substituted β-diketone being 3-methyl-2,4-pentanedione satisfying present claim 9 ([0030]); a water-soluble organic solvent including alcohol -based solvent in an amount higher than 40 mass%, satisfying present claims 7-8 ([0031]-[0036], Example 1), and an inorganic acid being hydrochloric acid in amount satisfying present claims 4-5 ( b/a ratio as in formula (1) is 2.75x10-4 as in Example 1, [0055]), which render the pH of the liquid being in the range of 2.00 to 7.00 (pH of 01 N HCl is 2.00, diluted HCl solution as in the sol liquid should have pH higher than 2.00 but less than 7.00). ‘711 does not set forth that the sol liquid further contains an organic acid. However, it is well-known in the art inorganic acid such as hydrochloric acid, sulfuric acid; and organic acid such as acetic acid, propionic acid and the like can be used to catalyze hydroxylic reaction of metal alkoxides, as evidenced by ‘867 ([0080]). In light of these teachings, it is known in the art that both inorganic acid and organic acid can be used to catalyze hydrolysis of metal alkoxides, thus it would have been obvious to one of ordinary skill in the art to be motivated to further use there acids together to catalyze the hydrolysis of metal alkoxides as in the sol liquid of ‘711. It is well settled that it is prima facie obvious to combine two ingredients each of which is taught by the prior art to be useful for the same purpose. The idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06). ‘867 also teaches that the metal sol liquid may further contain a second metal element different from the first metal element ([0064]-[0073]), thus one of ordinary skill in the art would have been motivated to use more than one metal alkoxides to render a metal oxide sol liquid having desired properties and functions.
Regarding claim 6, modified ‘711 teaches all the limitations of claim 1, but the prior art does not disclose the organic acid content satisfying present claim 6. However, it is known in the art that the organic acid such as acetic acid is a weak acid which can be used to fine tune pH of a solution having a strong acid such as hydrochloric acid to form a solution having desired pH; it is also known in the art that the gelling speed of metal sol liquid formed from metal alkoxide directly depends upon pH of the sol liquid, thus the organic acid content in the sol liquid is an effective variable in terms of the gelling speed of the sol liquid. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the content of the organic acid in the sol liquid of ‘711 within the scope of the present claim, so as to produce desired gelling speed and render the sol liquid having sufficient stability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782