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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Application
Claims 1-8 are pending and presented for examination.
Priority
Acknowledgement is made of applicant's request for foreign priority under 35 U.S.C. §119(a)-(d). Certified copies of the priority documents have been received.
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 1-3 and 5-8 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.
As to claims 1 and 5 (and those dependent thereon), the units for the silica particle size are not given, so the metes and bounds of how the product is actually determined is indefinite. For the purposes of compact prosecution the units are being treated as nanometers like in claim 4.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 20210087067 to Ashitaka et al. (hereinafter, “Ashitaka at __”).
Regarding claims 1, 3 and 4, Ashitaka discloses a silica sol (Ashitaka at “Abstract”) comprisinmg:
A primary silica particle size between 10-120 nm (Ashitaka at [0080]) and a circularity of less than 0.60 such that the product of the two is between less than 6 and less than 72 which overlaps the instantly claimed range of 15-31.2 which is prima facie obvious (see MPEP 2144.05);
A concentration of silica particles in the dispersion is 7-25% ([0082]) which also overlaps the range of 20% or more;
A metal impurity concentration of less than 2 ppm which overlaps less than 1 ppm ([0084]),
A viscosity of 2 mPa-s (“Table 2”, while this is not necessarily at 20% by mass at 25 C, given the same product and same method of making as laid out supra and including usage of heat distillation [0027]), the same viscosity and with it also the same total organic carbon amount of <10 ppm would be expected, absent evidence to the contrary, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".).
As to claim 2, the pH can be neutral so 7 ([0090]).
Turning to claims 5-8, Ashitaka discloses a method of making silica sol comprising:
A reaction step of reacting an alkoxysilane (TMOS, [0109]) in an organic solvent (methanol) containing ammonia water ([0030] and “Example 1” exemplifies the specific production process) to obtain a reaction liquid containing silica particles;
A concentration step fo concentrating the reaction liquid to set a concentration of the silica particles to 20 mass% or more ([0119]) followed by a water substitution step of substituting the solvent with water ([0122]),
Such that in the reaction step a product of an average primary particle size of the silica particls and an average circularity of the silica particles is between 15 and 31.2 as it is overlapped per the rejection of claim 1.
Claims 1-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 20210294237 to Iguchi et al. (hereinafter, “Iguchi at __”).
As to claims 1-4, Iguchi discloses a silica sol comprising average particle size is between 10 and 80 nm and an average circularity between 0.8 and 0.94 ([0112]) such that the product is between 8 and 75.2 which overlaps the instantly claimed range of 15 and 31.2 which is prima facie obvious (see MPEP 2144.05);
A concentration of 40% ([0251]);
A viscosity at 25 C for the obtained solution of 2-5 cts which is 5.3-13.25 mPa-s ([0064]).
However, Iguchi does not expressly state the total organic carbon amount of less than 10 ppm per mass of silica nor a metal impurity content of less than 1 ppm. Iguchi discloses siloxane as 1 ppm or more which overlaps 10 ppm or less ([0088]) which renders that aspect a prima facie case of obviousness owing to the overlap. Though to both aspects recited herein, the method of making is the same as that of claim 5 as discussed supra and as such, absent evidence to the contrary, one of ordinary skill in the art would expect the same total organic carbon amount and the same metal impurity amount, though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))". The same holds true for the pH for claim 2.
Regarding claims 5, 7 and 8, Iguchi discloses a method of making a silica sol (Iguchi at “Abstract”) comprising:
A reaction step of reacting TEOS, methanol, and aqueous ammonia ([0254]) to obtain a reaction liquid containing silica particles; and
A concentration step of concentrating the silica particles to a concentration of 20 mass% or more (40%, [0251] via a rotary filter),
Wherein the average particle size is between 10 and 80 nm and an average circularity between 0.8 and 0.94 ([0112]) such that the product is between 8 and 75.2 which overlaps the instantly claimed range of 15 and 31.2 which is prima facie obvious (see MPEP 2144.05).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent No. 9904197 to Eri et al. (hereinafter, “Eri at __”) Eri discloses a method of making a silica sol (Eri at “Abstract”) comprising:
A reaction step of reacting TEOS in methanol with aqueous ammonia to obtiana reaction liquid containing silica particles (Eri at 35:14-30);
A concentration step of concentrating the silica particles to a concentration via a rotary filter to (Id.) to a concentration of 40% (Id.),
The average particle size is between 40-200 nm (11:66) and an average circularity of 0.94-0.98 (9:48) such that the product is 37.6-196 which is above the range instantly claimed.
Conclusion
Claims 1-8 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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