DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
2. Claims 1-2, 6, 8-13, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. (US 2021/0223686)1 in view of OLDENBURG et al. (US 2016/0250612) and Dutta (US 7,253,119)2.
As to Claims 1-2, 6, 8-13, 17, and 19-20: Joshi et al. disclose an imprint composition (Paragraph [0002]), comprising one or more types of nanoparticles, one or more solvents, one or more surface ligands, one or more additives, and one or more acrylates (Paragraph [0012]), wherein the nanoparticles comprise a core comprising a metal oxide and a shell has a thickness of 0.1-50 nm (Paragraphs [0015] and [0017]), which also overlaps with the shell thickness of 1-25 recited in present claim 11. Joshi et al. also disclose that the nanoparticles have a spherical or oval shape (Paragraph [0013]) and their core has a diameter of 2-5 nm (i.e., encompassed by core’s diameter of 2-50 nm recited in claims 10 and 19-20) and comprises titanium oxide (Paragraphs [0014]-[0016]).
While Joshi et al. broadly disclose that their shell can contain one or more organic materials and/or one or more inorganic materials (Paragraph [0015]), they do not specify them as including a passivation material comprising a silicon-containing compound comprising a silane including aminopropyltriethoxysilane as required by claims 1-2, 6, 12-13, 17, and 20. They also do not specify their nanoparticles as being passivated as required by the claims.
Nevertheless, OLDENBURG et al. disclose the use of nanoparticles having a core-shell structure, wherein the shell encapsulates the core and comprises a silane selected from aminopropyltriethoxysilane (Paragraphs [0020] and [0043]-[0044]), which according to paragraph [0020] of the present specification corresponds to the claimed passivation material comprising a silicon-containing compound. OLDENBURG et al. also disclose that this shell material provides a protective coating of particles that offer great stability (Paragraph [0005]).
Moreover, Dutta teaches forming nanoparticles with a passivated surface (corresponding to the claimed passivated nanoparticles) decreases bonding between nanoparticles and thus decreases nanoparticle agglomeration and becomes significantly more stable which is desirable for various applications (Col. 3, lines 30-45 and Col. 5, lines 20-35).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ nanoparticles, including those that have a shell made of silane including aminopropyltriethoxysilane and are passivated, as taught by OLDENBURG et al. and Dutta, in the composition of Joshi et al., with a reasonable expectation of successfully obtaining desired stability.
3. Claims 1, 3-5, 7-12, 14-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. (US 2021/0223686)3 in view of Dutta (US 7,253,119)4 and Taskar et al. (US 2007/0221939).
As to Claims 1, 3-5, 7-12, 14-16, and 18-20: Joshi et al. disclose an imprint composition (Paragraph [0002]), comprising one or more types of nanoparticles, one or more solvents, one or more surface ligands, one or more additives, and one or more acrylates (Paragraph [0012]), wherein the nanoparticles comprise a core comprising a metal oxide and a shell has a thickness of 0.1-50 nm (Paragraphs [0015] and [0017]), which also overlaps with the shell thickness of 1-25 recited in present claim 11. Joshi et al. also disclose that the nanoparticles have a spherical or oval shape (Paragraph [0013]) and their core has a diameter of 2-5 nm (i.e., encompassed by core’s diameter of 2-50 nm recited in claims 10 and 19-20) and comprises titanium oxide (Paragraphs [0014]-[0016]).
While Joshi et al. broadly disclose that their shell can contain one or more organic materials and/or one or more inorganic materials (Paragraph [0015]), they do not specify them as including a passivation material comprising a silicon-containing compound comprising a silane including siloxane, such as polydimethylsiloxane, silanol or silicone as required by claims 1, 3-5, 7, 12, 14-16, 18 and 20. They also do not specify their nanoparticles as being passivated as required by the claims.
Nevertheless, Taskar et al. teach the use of nanoparticles coated with an outer shell-coating that comprises a silanol functional group dispersed in a siloxane polymer, e.g., polydimethylsiloxane, or a silicone polymer (which according to paragraph [0006] of the present specification corresponds to the claimed shell comprising a passivation material comprising a silanol, a siloxane or a silicone) for the purposes of obtaining enhanced stability/shelf-life (Paragraphs [0010], [0018]-[0020], [0037], and [0043]).
Moreover, Dutta teaches forming nanoparticles with a passivated surface (corresponding to the claimed passivated nanoparticles) decreases bonding between nanoparticles and thus decreases nanoparticle agglomeration and becomes significantly more stable which is desirable for various applications (Col. 3, lines 30-45 and Col. 5, lines 20-35).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ nanoparticles, including those that have a shell made of silanol, siloxane such as polydimethylsiloxane, or silicone, and are passivated, as taught by Taskar et al. and Dutta, in the composition of Joshi et al., with a reasonable expectation of successfully obtaining desired stability and shelf-life.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
4. Claims 1-2, 6, 9-11 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 16 and 18 of U.S. Patent No. 12,044,963 (hereinafter referred to as “the patent”) in view of OLDENBURG et al. (US 2016/0250612) and Dutta (US 7,253,119)5.
The claims of the present application and the patent are directed to imprint compositions comprising a plurality of nanoparticles, wherein each nanoparticle comprises a core made of a metal oxide, including titanium dioxide, and a shell, one or more solvents, a surface ligand, an additive, and an acrylate. The claims of the patent recite that the core of the nanoparticles have a diameter of 2-500 nm (which overlaps with the presently claimed core diameter of 2-50 nm) and shell thickness of 0.1-100 nm (which overlaps with the presently claimed shell thickness of 0.1-50 nm and 1-25 nm). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, the claims of the patent do not specify the shell as including a passivation material comprising a silicon-containing compound comprising a silane including aminopropyltriethoxysilane as required by present claims 1-2, 6, and 20. They also do not specify their nanoparticles as being passivated as required by the claims of present application.
Nevertheless, OLDENBURG et al. disclose the use of nanoparticles having a core-shell structure, wherein the shell encapsulates the core and comprises a silane selected from aminopropyltriethoxysilane (Paragraphs [0020] and [0043]-[0044]), which according to paragraph [0020] of the present specification corresponds to the presently claimed passivation material comprising a silicon-containing compound. OLDENBURG et al. also disclose that this shell material provides a protect coating of particles that offer great stability (Paragraph [0005]).
Moreover, Dutta teaches forming nanoparticles with a passivated surface (corresponding to the presently claimed passivated nanoparticles) decreases bonding between nanoparticles and thus decreases nanoparticle agglomeration and becomes significantly more stable which is desirable for various applications (Col. 3, lines 30-45 and Col. 5, lines 20-35).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ nanoparticles, including those that have a shell made of silane including aminopropyltriethoxysilane and are passivated, as taught by OLDENBURG et al. and Dutta, in the patent’s composition, with a reasonable expectation of successfully obtaining desired stability.
Correspondence
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 11/28/2023.
2 Cited in the IDS submitted by applicants on 11/28/2023.
3 Cited in the IDS submitted by applicants on 11/28/2023.
4 Cited in the IDS submitted by applicants on 11/28/2023.
5 Cited in the IDS submitted by applicants on 11/27/2023.