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 I, claims 1-5 in the reply filed on February 6, 2026 is acknowledged.
Claims 5-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 6, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 10, 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
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.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (WO2019017196, English translation provided for citations, hereinafter referred to as “Hirano” as evidenced by Shin-Nakamura Chemical - Monofunctional Acrylate Product Information in view of Kolb et al. (US 2013031637, hereinafter referred to as “Kolb”).
As to Claim 1: Hirano teaches a zirconium oxide particle dispersion composition comprising zirconium oxide particles dispersed in a dispersion medium wherein said dispersion medium comprises a polymerizable compound (Abstract and [0018]) wherein said polymerizable compound may be, inter alia, benzyl acrylate ([0047]), which reads on the claimed resin according to the instant specification (pg. 5, para. 3). Hirano further teaches that the composition may comprise a carboxyl compound (i.e., a hydrogen bond donor) that acts as a surface modifier on the surface of the zirconium oxide particles ([0038]). Hirano further teaches that the carboxyl compound may be an ester obtained by esterifying a (poly)carboxylic acid and that carboxyl groups (i.e., hydrogen bond donors) may remain in non-esterified form in the molecule ([0030]).
Hirano further teaches that the amount of the carboxylate surface modifier compound in the dispersion may be present in an amount of 5% by mass to 60% by mass ([0015]), but does specifically measure a grafted amount on the surface of the zirconium oxide.
Kolb teaches an optical film composition comprising a surface modified inorganic nanoparticle ([0007]) wherein said inorganic nanoparticle may be zirconia ([0078]) which may be surface functionalized with carboxylic acid species ([0009]-[0013]) that acts as a compatibilizer ([0088]-[0091]) to improve compatibility with organic matrix materials ([0086]). Kolb teaches that the total organic content of the surface functionalization on the nanoparticle surface may be from 1 wt% to 20 wt% ([0087]). Hirano and Kolb are considered analogous art because they are directed towards the same field of endeavor, namely, inorganic nanoparticle (i.e., zirconia) dispersion compositions suitable for optical applications. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention either to select a surface functionalization of 1 to 20 wt%, as taught by Kolb, and the motivation would have been that Kolb teaches that such a degree is recognized within the art as a suitable amount of surface carboxylic acid functionalization of a zirconia nanoparticle to achieve improved compatibilization of said nanoparticle within organic matrices ([0086] of Kolb).
As to Claim 2: Hirano teaches the dispersion liquid of claim 1 (supra).
Hirano further teaches exemplary compositions wherein zirconium oxide is surface-functionalized with a monofunctional acrylate A-SA manufactured by Shin-Nakamura Chemical Co., Ltd., ([0115], Example 10) which has the structure (as evidenced by Shin-Nakamura Chemical - Monofunctional Acrylate Product Information, pg. 4):
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which reads on the claimed modifier wherein R is an acryloyloxy group, A is an alkoxy chain segment, and X is a carboxyl group.
As to Claim 4: Hirano teaches the dispersion liquid of claim 1 (supra).
Hirano teaches a zirconium oxide particle dispersion composition comprising zirconium oxide particles dispersed in a dispersion medium wherein said dispersion medium comprises a polymerizable compound (Abstract and [0018]) wherein said polymerizable compound may be, inter alia, benzyl acrylate ([0047]).
As to Claim 5: Hirano teaches the dispersion liquid of claim 1 (supra).
Hirano teaches various exemplary embodiments wherein the zirconium oxide has a particle size of 30 nm ([0086], Example 2) and 3 nm ([0088], Example 3), which are within the claimed range.
Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hirano et al. (WO2019017196, English translation provided for citations, hereinafter referred to as “Hirano” as evidenced by Shin-Nakamura Chemical - Monofunctional Acrylate Product Information in view of Kolb et al. (US 2013031637, hereinafter referred to as “Kolb”) and further in view of Kliss et al. (US 20050048010, hereinafter referred to as “Kliss”).
As to Claim 3: Hirano teaches the dispersion liquid of claim 2 (see above).
Hirano teaches various carboxyl compound that acts as a surface modifier on the surface of the zirconium oxide particles ([0038]). Hirano further teaches that the carboxyl compound may be an ester obtained by esterifying a (poly)carboxylic acid and that carboxyl groups (i.e., hydrogen bond donors) may remain in non-esterified form in the molecule ([0030]). However, Hirano is silent towards wherein the modifier comprises at least one of the claimed compounds.
Kliss teaches surface modified nanoscale zinc oxide suitable for optical devices (Abstract and [0043]) wherein the surface of the zinc may be coated with an oligo- or polyethylene glycol acid having the general formula R—CH2—(O—CH2—CH2)n—O—CH2—COOH wherein n may be 0 to 40 and R may be COOH ([0028]-[0029]), which reads on the claimed 3,6-dioxaoctanedioic acid wherein n = 1. Kliss teaches that said surface modification improves dispersibility of the zinc oxide in polar organic solvents ([0028]). Hirano and Kliss are considered analogous art because they are directed towards the same field of endeavor, namely, surface modification of metal oxides for improving dispersibility thereof. Hirano contemplates surface functionalization comprising carboxylic acid functional groups is known to functionalize the surface of zirconium oxide particles and to reduce aggregation thereof ([0072]), including (poly)carboxyl compounds having free-carboxylic acids ([0030]). Hirano also contemplates dispersing the surface-modified zirconium in polar organic solvents ([0049]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to additionally include a compound comprising the claimed structure, such as the claimed 3,6-dioxaoctanedioic acid as taught by Kliss, as a surface modifier for the zirconia oxide of Hirano and the motivation would have been that Kliss teaches that 3,6-dioxaoctanedioic acid is a compound known to react with metal oxides (i.e., zirconium oxide and zinc oxide) in the same manner as taught by Hirano, and that surface coatings formed thereof improve dispersibility of metal oxides in liquid medium dispersions (Abstract of Kliss), which is an improvement explicitly sought by Hirano ([0007]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767